TRADEMARKS 
TRADENAMES 



AND 



UNFAIR COMPETITION 
IN TRADE 




MUNN & CO. 

NEW YORK 



m 






TRADE MARKS, TRADE NAMES 



AND 



UNFAIR COMPETITION 
IN TRADE 



Edited for 
THE BUSINESS MAN 

BY 

Orson D. Munn 
Of the New York Bar 



MUNN & CO. 

Patent and Trade-Mark Solicitors 
WooLWORTH Building Washington Office 

233 Broadway 625 F Street 

New York Washington, D. C 



:b 









FOREWORD 



The purpose of this little book is to present, in the 
simplest manner, consistent with comprehensiveness, 
an interpretation of the Federal statutes concerning 
trade-mark registration and protection. 

As the book is intended for business men, we have 
avoided legal phraseology as much as possible as well 
as long quotations from court decisions, except where the 
inclusion of such excerpts was found necessary to a clear 
understanding of the subject. 

Our large trade-mark practice, extending over many 
years, has developed the conviction in our minds that a 
great deal of useless labor in devising trade-marks that 
cannot be registered — to say nothing of vexatious 
litigation over defective marks — might be obviated by 
some such publication as this. 

We call the attention of those, who are interested in 
trade-marks to the superior facilities of our trade-mark 
department for handling business of this character. 

Our service includes not only registration of trade- 
marks, and general trade-mark practice before the 
Patent Ofhce, but also registration of trade-marks in 
foreign countries and the registration of foreign-owned 
marks in the United States. 

Among our trade-mark clients are man}^ of the largest 
and most successful business enterprises in America. 

MUNN & COMPANY 

NEW YORK AND WASHINGTON 



Copyright 1912, 1013, 1914, 1015, by Munn & Company ^-v 



©CI,A398837 ^ 

MAY 17 1915 



CONTENTS 



Page 
Chapter I. The Trade- Mark as a Business Asset 1 

Chapter IL The Federal Trade-Mark Law 7 

The Act of 1905 8 

Association Trade-Marks 10 

The Ten Years' Clause 11 

Classification of Merchandise . .- 11 

Registration Involves Obligation 13 

Affixation 13 

Rules of the Patent Office 13 

Number of Rejected Applications 14 

Chapter III. Analysis of the Requirements for Regis- 
tration 15 

A Trade-Mark Must Not Be Identical with 

Another Already in Use 15 

Red Cross Trade-Marks 17 

Descriptive Marks 17 

Geographical Marks 20 

A Trade-Mark Must Not Be National In- 
signia 22 

Conditions Under Which a Personal Name 

May Be Registered 22 

Registration of Portraits 23 

A Trade-Mark Must Not Misrepresent 23 

Trade-Marks Not Registrable When Op- 
posed to Public PoHcy . . .■ 24 

Other Restrictions 24 

Chapter IV. The Elements of a Good Trade-Mark 26 

Nine Tests of a Desirable Trade-Mark 28 

Special Notice 30 



Part I 

INFRINGEMENT 

Chapter V. Trade-Marks Defined 31 

Trade-Mark Statutes 31 

Statute vs. Common Law 34 

Effect of Trade-Mark Act 34 

Trade-Marks and Trade-Names Distin- 
guished 35 

Proper Names as Trade-Marks 36 

Names of Patented Articles 37 

Priority of Adoption and Use 38 

iii 



Contents, 



Page 

The Ten- Year Clause 40 

Loss of Trade-Mark Rights 41 

Assignability of Trade- Marks. . 46 

Knowledge or Intent 47 

Infringement of Marks, Symbols, Devices 

and Names 48 

Defense that Complainant and Defendant 

Are Not Competitors 51 

Part II 

UNFAIR COMPETITION 

Definition of Unfair Competition 52 

Distinction Between Infringement and Un- 
fair Competition 53 

Nature of Unfair Competition 54 

Simulation of Merchandise and Dress of 

Goods 59 

The Acquisition of Secondary Meanings to 

Trade- Marks and Trade- Names 62 

Substitution 65 

Corporate Names 67 

Accountings and Damages 69 

Chapter VI. Munn & Company .' 73 

Assignment of Trade- Marks 74 

Information Required in Making Application 

for Registration 74 

Registration in Foreign Countries 75 

Our Facilities 75 

ABBREVIATIONS 

F Federal Reporter 

N. Y. S .New York Supplement 

App. D. C Appeal Cases District of Columbia 

A Atlantic Reporter 

N. W North Western Reporter 

N. E North Eastern Reporter 

U. S United States Supreme Court Reports 

App, Cases Appeal Cases (English) 

Sandf Sandford's N. Y. Chancery Reports 

N. Y New York Court of Appeals Reports 

W. N. Cases Weekly Notes (English) 

App. Div Appellate Division (N. Y.) 

P Pennsylvania Reports 

S. W South Western Reporter 



CHAPTER I 
The Trade-Mark as a Business Asset 

IF you should find in your Santa Claus stocking, next Christ- 
mas, a gift for the exclusive right to use the word " Royal" 
as a name for baking powder, you would be eight million 
dollars richer than you were the day before. 

It is said, on good authority, that the Royal Baking Powder 
Company considers its trade-mark worth just $1,600,000 a letter. 
This is, perhaps, the most valuable trade-mark in existence, 
though it is rivaled in value by "Kodak," "Uneeda," "Ivory" 
(as applied to soap), "Coca-Cola," the name "Gillette" used in 
connection with safety razors, and a half dozen others. Each 
of these trade-marks has become a national institution. To 
displace them in the public mind would require competition of 
unheard-of magnitude and energy. 

The name "Coca-Cola" is worth at least five million dollars; 
the Gorham silver-ware mark two millions, at a fair estimate; 
the trade-marks of the National 
Biscuit Company, all of which 
touch the highest standard of dis- 
tinctiveness, must be the largest 
asset of that concern; and the 
name " Kodak" — where would the a five-million dollar trade 
Eastman Company's business go mark. 

to if it should hand over the trade-mark " Kodak" to some other 
concern, and go on marking the same goods under the name of 
Smith's Hand Cameras? 

When the American Tobacco Company was recently dissolved 
into separate companies, under the order of the Supreme Court, 
the trade-marks of the combination were estimated to have a 
value of $45,000,000, out of total assets of $227,000,000. 

The aggregate total value of well-known American trade- 
marks must be in the hundreds of millions of dollars. But any 
estimate of the value of- a trade-mark, apart from the business 
to which it appUes, is necessarily a mere guess, for a trade-mark 
is a species of commercial property that cannot be sold by itself. 
It is inseparably attached to the business from which it emanates, 
and cannot be transferred without a transfer of the business. 
There are cases where a concern's trade-mark has become so 
valuable, through long years of popularity and profit-making, 
that it entirely overshadows all other assets of the business — in 
short, the business could not exist without it. 

A trade-mark is a symbol of Good- Will — using the words 
"Good- Will" in the same sense that the bookkeeper uses them. 
It stands for built-up reputation ; it is the link that connects the 




2 Trade-Marks. 



ultimate consumer with the manufacturer. It preserves the 
identity of merchandise, and, in carrying out this function, it is 
a device of inestimable value to the commercial world. 

Sometimes a complex chain of events is best explained by a 
simple illustration. With this idea in mind, let us put ourselves 
in the place of a woman who wants a 
cake of Ivory Soap. She lives in a 
desert town in Arizona. She cannot go 
half across the continent to Cincinnati 
to buy a five-cent cake of soap from 
Procter & Gamble. In fact, it is a safe 
bet that she never heard of Procter & 
Gamble, but she knows that she wants 
Ivory Soap. So she sends her little 
girl down to the "general" store, and 
this lisping messenger asks for ' ' Ivory ' ' 
Soap — not just plain "soap" — and 
brings the familiar package with the 
name on it back to her mother. If the 
THIS DREssED-up DUCK- Storekeeper sends some other kind of 
LING IS THE TRADE-MARK soap thc owncr of thc nickel knows 
FLEEcS!'^'''^''^ DUCKLING instantly that she did not get what she 
wanted. 
By means of the trade-mark "Ivory" the manufacturers in 
Cincinnati deal with this buyer in Arizona as surely and as 
expeditiously as if the lived across the street from their factory. 
Trace this transaction backward, and you will find its trail 
running unerringly through the retailer, the wholesaler, and the 
jobber to the manufacturer — and at every stage of its journey 
the product kept its personality. It left Cincinnati as Ivory 
Soap, and as Ivory Soap it was put into the consumer's hands. 
Selling by trade-mark is one of the miracles of modem mer- 
chandising. Its development to a state of high efficiency has 
taken place during the last hundred years. 




Competition is the basis of the modern industrial system. 
Plainly defined, a competitive system means a system under 
which every trader, large and small, must be prepared to justify 
his existence at any time. 

In the early centuries of English industrial life, competition 
in the modern sense was unknown, as Townsend Warner points 
out in his "Landmarks of Industrial History." For centuries 
after the Norman conquest of England, all manufactured articles 
v^^ere produced by craftsmen — each master craftsman working 
in his tiny shop with two or three apprentices. 

All craftsmen belonged to gilds, whose status and authorits 
were recognized by the law of the time. These gilds fixed thc 
prices of commodities — a price "fair to the seller and fair to thc 
buyer." A craftsman coukl not push his trade beyond his own 
immediate locality, because in that event he would come in 



/ 



Trade-Names. 



conflict with his brother craftsmen. He made shoei, or harness, 
or wove rough woolen coats, and sold them to his neighbors at 
a price that was fair to him and fair to them, and in somnolent 
old age was gathered to his fathers, without having heard the 
word "competition" or its equivalent in burly Saxon-French. 

With the decay of centuries, the gilds slowly passed away, 
and upon their ruins arose the modern factory system. 

In the new adjustment of things, here and there a craftsman 
with more energy and a longer financial head than his fellows, 
began to extend his trade, and employ more journeymen and 
apprentices, v 

In 1550 John Winchcombe, "Jack 



SAPOLIO 



of Newbury," a woolen weaver, had a 
hundred looms at work in his own 
house, and Winchcombe woolens were 
known as far as Antwerp. At the ^ world-famous trade- 
same tune, London craftsmen were mark, this is a coined 
selling their goods all over England — word, devised about 
or,atleast,inthelargertownsa„dthere '^rdilll.^T'n.Tc.S. 
was a growmg trade with inlanders. 

These manufacturers, as the circle of their trade expanded, 
began to see the desirability of marking their products in some 
way to identify them, so that purchasers at a distance would be 
able to distinguish them from similar articles produced by others. 

Any device for identifying a commercial product is a trade- 
mark, in the broad significance of the term. 

Some of the early trade-marks were rude initials and cryptic 
designs of interlaced crosses and circles. Others consisted of 
dragons and winged snakes, and various real and unreal animals. 

The craftsmen of the fifteenth and sixteenth centuries were 
the first users of trade-marks in England. 

The flickering torch of the antiquarian throws a dim light on 
some sort of trade-mark usage current 
among the Greeks and Romans, and even 
among more ancient trading peoples, but 
these researches hold but little of interest 
to us. Our present purpose is to consider 
the function of the trade-mark in modem 
business, and with that thought in mind, it 
may be taken as an established fact that 
trade-marks, in the modern sense, have a continuous history of 
perhaps five hundred years. 

In the early part of the seventeenth century the gold-beaters 
of Nuremberg were using trade-marks, and they had systematized 
their use to such an extent that an official register of gold-beaters' 
marks was kept and penalties for the misuse or counterfeiting of 
trade-marks had been established a law. This register has been 
preserved. Its yellowed pages are decorated with curious de- 
vices of serpents and dragons, doves and crosses. Without 
exception, the marks of the Nuremberg gold-beaters were picture 
marks. 



3C 

IjxrK used betweeni7io-53. 



Trade-Marks. 




In the early part of the eight- 
eenth century the use of trade- 
marks was general, in certain 
lines of trade, throughout Europe. 
But the lack of specific legisla- 
tion for the registration of trade- 
marks at that time — a lack that 
persisted until the nineteenth 
century — leads one to the con- 
clusion that these eighteenth cen- 
tury traders did not attach great 
importance to the subject. They 
evidently considered the trade- 
mark a mere minor accessory of 
business. 

The early decades of the nineteenth century witnessed the 
rise of three great forces which were destined to accomplish, in a 
short time, the most profound changes in manufacturing and 
selling methods. These forces were: 




f 



DERBY PORCELAIN TRADE-MARKS 
ORIGINATING AROUND THE MIDDLE 
OF THE EIGHTEENTH CENTURY. 



I St. 



•nd. 



3rd. 



The application of steam power to manu- 
facturing in a large and economical way. 
The development of cheap and quick trans- 
portation. 

The invention of means for the rapid dis- 
semination of intelligence. 
Factories, employing thousands of hands — great industrial 
monuments to Cheap Power — had inevitably to find distant 
markets for their products. No longer could the manufacturer 
sit at home and await the buyer. His product was too large, 
and its burden was too heavy to carry on a haphazard sales 
plan. Consequently, the selling departments of all enterprises 
grew tremendously in importance. Customers were sought across 
the breadth of a continent. Many a manufacturer's sales area 
grew, in the span of a generation, from a few hundred square 
miles to a region that included every degree of climate from the 
Arctic to the Torrid. 

To accomplish this result efficient selling methods, and 
economical and fast transportation, were required. 

As a natural consequence of these conditions trade-marks 
grew in importance. Manufacturers without trade-marks found 

that they had no hold on their 
trade. The consuming public 
did not know them or their 
products by name, and they 
were at the mercy of the 
jobber, the wholesaler and the 
retailer. They were sup- 
a chain of circumstances, of which every link was 



"WISHBONE" 

Reeistered Trade Mark 

TRADE-MARK FOR COAT HANGERi 
SHAPED SOMEWHAT LIKE A WISH-BONE. 



ported by 
weak. 

On the other hand, manufacturers whose trade-marks were 
firmly fixed in the public mind by reputation began to see that 



Trade-Names. 




they were, to a large degree, independent of the merchandising 
chain. The ultimate consumer knew their trade-marked prod- 
ucts, and asked for them by name. 

Thus, by a process of natural evolution, the trade-mark 
developed in importance from a workman's tool mark to a 
s^^mbol of Good- Will — a bvisiness asset in a tangible form. 

It is an axiom of legal philosophy 
that when a thing becomes valuable 
or desirable, legislation concerning 
its regulation and protection springs 
into being. Consequently one looks 

for, and finds, the beginning of ^Trademark Reg. u. s. Pat. Off.) 

specific legislation on the subject of ^^^3 ^^_^^^.^,_^^^ ^^ ^ 
trade-marks around the end of the dustless mop is an ex- 
first quarter of the nineteenth cellent example of letters 
century. 

Before the first trade-mark legislation, cases of infringement 
fell under the common law, and were decided in courts of equity. 

H. D. Nims, a well-informed writer on trade-marks, savs in 
his "Law of Trade-Marks and Unfair Trade": 

"It is rarely that one life sees the genesis and maturity of law, 
yet it has almost seen them of trade-mark law. In the eighteenth 
century there were a few scattered decisions which turned almost 
wholly on the question of fraud. With the rise and growth of 
machine-made merchandise in the earlier part of the last century, 
the matter of private marks of merchants to distinguish wares 
going out into the public markets of the world assumed importance 
and cases multiplied. Trade-mark law is one of the results of 
machinery. It is safe to say that the great mass of trade-mark 
and unfair-trade law is the development of the last forty years." 

A structure, of w^hich the foundation has been so recently 
laid, must necessarily be still unsettled. The rulings of both the 
Patent Office and the courts are, in many cases, contrary to 
precedent. In some instances, courts in different parts of the 
country have handed down contradictory decisions bearing on 
the same question. But, despite these drawbacks, a body of 
trade-mark law is being slowly formed, and it is only a question 
of time before our feet will be on firm ground. 

Trade-mark cases should be entrusted to attorneys who have 
specialized in this branch of the law. The legal status of this 
subject is changing so swiftly that an ordinary lawyer, absorbed 
in general practice, cannot keep track of it. 

A trade-mark has been defined as follows : 

"A trade-mark may be tersely defined to be any sign, mark, 
symbol, word or words which indicate the origin or ownership of 
an article as distinguished from its quality, and which others have 
not the equal right to employ for the same purpose. In its strictest 
sense, it is applicable only to a vendible article of merchandise to 
which it is affixed." 

{Ball V. Broadway Bazaar, Court of Appeals, N. Y., 87 A''. E. 
674.) 
We give this definition because it expresses ^n the fewest 
possible number of words the function and limitations of trade- 



Trade-Marks. 



marks. Also, because there is in the minds of many business 
men, a confused notion of the difference between a trade-mark 
and a trade-name. By referring to the definition it will be noted 
that a trade-mark is "applicable only to a vendible article of 
merchandise to which it is affixed." 

On the other hand, a trade-name applies to a business as a 
whole, although this business may be engaged in the sale of not 
one vendible article only, but a thousand. For instance, 
" Wanamaker's" is a trade-name and " Kodak" is a trade-mark. 
A trade-mark has no value except that created by the quality, 
sale, popularity and profit in the article to which it is affixed. 
No matter how distinctive, or attractive a mark may be, it is 
worth but little if it is used in connection with an inferior article 
or with an article sold without profit. 

But a distinctive and suggestive trade- 
mark is of immense help in advertising and 
selling. Consider, for example, the trade- 
mark of Old Dutch Cleanser. It is full 
of human interest, motion, life, and sug- 
gestion. It brings up in the mind the 
mental picture of dirt fleeing from an 
energetic Dutch scouring woman. That 
this mark has been a powerful aid to sales 
is obvious. Suppose Old Dutch Cleanser 
had been called Climax Cleaning Powder. 
Can you imagine anybody acquiring more 
than the most languid interest in anything 
A VERY SUGGESTIVE ^j^^ a namc so dull? It reminds one of 
^.™e-m.kS."""'"- hard and sordid toil. 




CHAPTER II 
The Federal Trade-Mark Law 

THE function of a trade-mark is to denote origin. As we 
pointed out in the preceding chapter, the necessity for using 
trade-marks arose as soon as the expanding wave of trade 
carried a craftsman's goods to customers outside of his own 
community. The ancient trade-mark was a simple device in- 
vented for the purpose of enabHng a maker of any commodity 
to hold his out-of-town customers, so to speak, by enabling them 
quickly and surely to identify his goods. 

Throughout its history the trade-mark has remained true to 
its ancient antecedents, and its purpose to-day, as it w^as in the 
fifteenth century, is specifically to indicate the origin of an 
article of merchandise. 

In this aspect of unchanging purpose, the trade-mark is 
somewhat an anomaly in commercial history. During the last 
four hundred years, methods of manufacture, distribution and 
sale have been revolutionized from top to bottom: banks, which 
began- as mere money-changing offices, have become establish- 
ments for keeping and loaning funds; the retailer, who used to 
sit in a hole in the wall with a handful of goods, all of the same 
kind, has developed into a merchant selling ten thousand 
different articles; the craftsman, who once served a long ap- 
prenticeship, during which he learned to make every part of a 
shoe or a carriage, has become a specialized laborer, employed 
by the day to produce the extreme subdivision of a finished 
article. 

It is strange that, in all this evolution of commercial methods, 
the trade-mark did not undergo a change in function. It might 
have become, by a gradual transformation, a merchant's mark, 
applied indiscriminately to all goods of every description sold by 
him. Or, it might have evolved into a stamp of merit or high 
quality, regulated by statute and licensed only to manufacturers 
who could prove their right to, use it. 

But none of these changes has taken place, and the trade- 
mark of the twentieth century has for the beginning and end of 
its function the purpose of indicating to buyers the association 
of merchandise with a particular rrianufacturer or dealer. 

The present Federal Trade-Mark law went into effect on 
April I, 1905. 

The reader should understand clearly that the right to own 
a trade-mark is not a creation of the statute, for the use of 
trade-marks, and the recognized right of manufacturers to be 
protected in their use, far antedate any specific trade-mark 
legislation. 

7 



Trade-Marks. 




The intent of the statute is to systematize and codify trade- 
_ mark practice. It provides a definite procedure for 

1905 ^^^® registration of trade-marks; lays down rules for 

validity in marks; puts trade-mark litigation, when 
registered trade-marks are the subject matter of the litigation, 
within the jurisdiction of the Federal Courts; and makes every 
trade-mark registered under the law a part of the public records 
of the nation. But a trade-mark may be legally sound even if 
not registered, just as a person may own real estate without 
recording the title. 

The ownership of trade-marks, like any other property right, 
is recognized by the common law. The Supreme 
Court of the United States has said : ' ' The right 
to adopt and use a symbol or device to distinguish 
the goods or property made or sold by the 
person whose mark it is, to the exclusion of use 
by all other persons, has been long recognized 
by the common law and the chancery courts 
of England and of this country. It is a property 
right for the violation of which damages may 
be recovered in an action at law, and the 
continued violation of it will be enjoined by 
a court of equity with compensation for past 
infringements." 

Trade-marks, under the Act of 1905, are 
registered in the United States Patent Office. 
In case of litigation resulting over the right 
to use any trade-mark, evidence of the registration of the mark 
by one of the litigants puts the burden of proof upon the other. 
In other words, the user of the unregistered trade-mark must 
prove priority of use and ownership. This is often a very difficult 
thing to do, especially in the case of trade-marks that have been 
used a long time, for such proof must necessarily rest upon the 
production of old labels, packages of the goods with the trade- 
mark affixed, and the testimony of witnesses. 

The owner of a registered trade-mark does not need any 
evidence other than the public records of the Patent Office to 
establish the date of his first use of the mark. 

When a trade-mark is not registered in the Patent Office, 
litigation concerning it does not come under the jurisdiction of 
the Federal courts, unless the opposing parties are citizens of 
different states. 

On the other hand, all cases pertaining to registered trade- 
marks used in interstate or foreign commerce fall within the 
field of Federal jurisdiction, irrespective of the amount in dispute 
or the place of residence of the parties. This is an advantage, 
owing to the fact that an injunction secured in one Federal 
Court will be enforced in all such courts in any state. 

The fee charged by the Patent Office, under the law, for 
registering a trade-mark is ten dollars. This does not include 
the attorney's fee, which must be paid by the applicant. 



THE PO M- 
PEIAN WINDOW 
SCREEN TRADE- 
MARK. 



Trade-Names. 



A certificate of registration remains in force for twenty 
years, and it may be renewed, upon expiration, for like periods 
of twenty years, upon payment of a renewal fee of ten dollars. 

An individual or corporation 

has a right to register a trade- 
mark under the United States law 
if the trade-mark for which regis- 
tration is sought belongs to the 
applicant and is used by him: 

I St. In commerce among 
the several states: 



TRADE MARK 




REG. U.S.PAT. OFF. 



2nd Or in commerce with -^ celebrated underwear 

2na. wr 111 comiueiLt; wiuii trade-mark, composed of the 

loreign nations; words "porous" and "knit." 

^rd. Or, in commerce with this mark seems almost de- 

the Indian tribes- scriptive, but it does not 

tne maian irioes. "describe the goods." it de- 

provided the owner of the trade- ^cRiy^" """"^ knitting process 
mark resides within the territory 

of the United States (which includes all territory under United 
States control), or has a business establishment situated in 
United States territory, or resides in any foreign country 
which affords, by treaty, similar privileges to citizens of the 
United States. 

Divested of legal verbiage, the main provisions of the Act, 
so far as the features governing registration are concerned, may 
be stated as follows : 

A trade-mark A design or wording identical with a registered or known 

is not regis- trade-mark owned and in use by another, and appropriated 

trable if it is: to merchandise of the same descriptive qualities, or which 

so nearly resembles a registered or known trade-mark 

owned and used by another, and appropriated to merchandise of 

the same descriptive qualities, as to deceive purchasers, or to be 

likely to cause confusion in the mind of the public. 

The insignia of the American National Red Cross Society. 

The flag or coat of arms of any foreign nation. 

Any design or pictiire which has been adopted by a fraternal 
society as its emblem. 

A portrait of a living individual unless the application for registra- 
tion is accompanied by the written consent of the individual whose 
portrait is used. 

Scandalous or immoral matter of any description. 

The flag, or coat of arms, of the United States, or of any state, or of 
any municipality, or any of the insignia thereof. 

Any geographical name or term. 

A misrepresentation of the quality, composition, character, origin, 
or nature of the commodity with which it is used. 

Any mark w^hich consists merely in the name of an individual 
firm, corporation, or association, unless said name is written, 
printed, impressed or woven in some particular or distinctive 
manner, or is used in connection with a portrait of the individual. 



10 Trade-Marks. 



Any arrangement of words or devices descriptive of the goods with 
which they are used, or of the character or quality of such goods. 
In other words, a trade-mark must not be an advertisement in the 
ordinary sense of the word. . 

A trade mark Unlike any other trade-mark, already in use, and applied 
i& registrable ^° *^^ same class of goods. It must not resemble the 
'f it • trade-mark of a competitor, or of a potential competitor, 

' '^ * to such an extent that the buying pviblic is likely to be 

deceived or confused by the resemblance. 

The business name of a person or firm vhen written, printed, im- 
pressed or woven in some distinctive manner, or in association with 
a portrait, or in an autographic form. 

Any trade-mark which has been in continuous and exclusive use 
by the applicant since February 21, 1895. 

An arbitrary symbol, or word, or words, or a combination of a 
device and wording, not obviously descriptive of the commodity 
to which it is to be applied. 

Used in lawful trade. 

Of such a character that it may be affixed, printed upon, woven, 
sewed, branded or otherwise impressed upon the product with 
which it is used, or upon the package or container of the product. 

The right to register trade-marks is limited to individuals 
and corporations. 

Under the. United States law an association cannot possess 
Association . a trade-mark, as exclusive ownership and specific 
trade-marks origin are essential attributes of validity. 

The letters "A- A. L," meaning Anti- Adulteration League, 
were refused registration as a trade-mark for flour on the ground 
that the mark did not represent origin, but membership in an 
association. The applicant was a voluntary association of flour 
manufacturers. It was held that an association cannot be the 
"owner" of a trade-mark within the meaning of the statute. 

Some states have enacted laws prohibiting the unauthorized 
use of the labels of trade-unions and similar associations. These 
laws are not trade-mark statutes. They are based on the 
broader principle of unfair business competition. 

It is the general opinion, we believe, of trade-mark authorities 
that the lack of provision in our law for 
association trade-marks is a defect that 
should be remedied as soon as possible. It 
is a noteworthy fact that most of the other 
great nations recognize association marks. 

An interesting example of an associa- 
tion trade-mark is that of the Irish In- 
dustrial Development Association (re- 
produced on this page). This association 
has a membership of about five hundred 
Irish manufacturers. Its use indicates 
THE IRISH NATioNAi ^^^^ ^^^ merchandise to which it is affixed 
TRADE-MARK. .^ ^^ j^.^^ manufacturc; in other words, 

it is indicative of geographical origin. The Irish trade-mark 




Trade-Names. H 



I MADE IN^"^ 

^mahaA 

vffl U.S.A. V, 



has been registered in Great Britain under the British Trade- 
Mark Act of 1905. 

An American by the name of D. B. 
Barrett attempted to register this mark in 
the United States Patent Office under his 
own name. This fact came to the atten- 
tion of the Irish Industrial Development 
Association, and some correspondence re- 
lating to the matter passed between Mr. 
John Redmond, the leader of the Irish 
National party in Parliament, and President ^he omaha trade- 

rry r. A ^t, 1 J- J -i-l,- T • t, MARK, WHICH WAS 

Taft. As the law now stands this Irish, chosen from 764 de- 

trade-mark cannot obtain in the United signs submitted, the 

States the protection that registration designer received a 

■ , , . -^ *= prize of SijOO. this 

might give. MARK WILL be RE- 

Within the last few years several produced on all 



American communities have adopted trade- stationery of omaha 
- - - — ~ - ^ - - manufacturers and 

will be affixed to 



marks, or labels. The Omaha trade-mark ^^^^^acturers and 



is reproduced here as an example of this all omaha- made 
class of marks. goods. 

There is a genuine need for an amendment to the law that 
would give this class of marks the right of registration. 

A provision of the Act of 1905 legalized all trade-marks that 
had been in exclusive use by the applicant for ten 
The T^ years prior to the passage of the act, and this pro- 

ears ause ^.^g^Qj^ applies even to trade-marks of ten years' 
standing that, because of their character, could not be registered 
under the act. The wording of the act deahng with this subject 
is as follows : 

"Nothing herein shall prevent the registration of any mark 
used by the applicant or his predecessors, 
or by those from whom title to the trade- 
mark is derived, in commerce with foreign 
nations or among the several states, or 
with the Indian tribes, w^hich was in actual 
and exclusive use as a trade-mark of the 
applicant or his predecessors from whom 

^ A - -% 1 ' . A r 1 j_ -^ TRADE-MARK REGIS 

he derived title for ten years next pre- tered under the ten 
ceding the passage of this act." years' clause. 

A manufacturer cannot register a trade-mark and file it a\A ay 
with the intention of using it at some future time. A condition 
of validity is that the mark must not only belong to the applicant, 
but must be "used by him in lawful trade." An intention to use 
a mark is not sufficient. The use in interstate trade must ante- 
date the application for registration. The letter of the law is 
complied with if a single -oackage of the goods with the trade- 
mark affixed is sold in good faith in interstate or foreign com- 
merce, although the shipment of a sample is not sufficient. 

. Those who intend to adopt trade-marks should 

of MerdiLII^ ^^^P ^^ ^i^^ t^^^ t^^ ^se of a trade-mark is Hmited 
dite strictly to one class of merchandise, which must be 

the class for which it has been registered. 



Coward 

Shoe 



13 



Trade-Marks. 



For purposes of classification the Patent Office has separated 
all merchandise into forty-nine general classes, as follows: 

partly prepared m 



Raw or 

terials. 

Receptacles. 

Baggage, horse equipments, port- 
folios, and pocketbooks. 

Abrasive, detergent, and polish- 
ing materials. 

Adhesives. 

Chemicals, medicines 
and pharmaceutical prepara- 
tions. 

Cordage 

Smokers' articles, not including 
tobacco products. 

Explosives, firearms, equipments, 
and projectiles. 

Fertilizers. 

Inks and inking materials. 

Construction materials. 

Hardware and plumbing and 
steam -fitting supplies. 

Metals and metal castings and 
forgings. 

Oils and greases. 

Paints and painters' materials. 

Tobacco products. 

Vehicles, not including engines. 

Linoleum and oiled cloth. 

Electrical apparatus, machines, 
and supplies 

Games, toys, and sporting goods. 

Cutlery, machinery, and tools, 
and parts thereof. 

Laundry appliances and ma- 
chines. 

Class li 



25. 

26. 



27. 
28. 

30. 

it. 
32. 
33. 
34. 



36. 
37. 

38. 
39. 

40. 

41. 
42. 

43- 

44. 

45. 
46. 
47. 
48. 
49. 
50. 



Locks and safes. 

Measuring and scientific ap- 
pliances. 

Horological instruments. 

Jewelry and precious-metal ware. 

Brooms, brushes, and dusters. 

C!r o c k e r y , earthenware , and 
porcelain. 

Filters and refrigerators. 

Furniture and upholstery. 

Glassware. 

Heating, lighting, and ventilating 
apparatus, not including 
electrical apparatus. 

Belting, hose, machinery pack- 
ing, and non-metallic tires. 

Musical instruments and supplies. 

Paper and stationery. 

Prints and publications. 

Clothing. 

Fancy goods, furnishings, and 
notions . 

Canes, parasols, and umbrellas. 

Knitted, netted, and textile 
fabrics. 

Thread and yarn. 

Dental, medical, and surgical 
appliances. 

Beverages, non-alcoholic. 

Foods and ingredients of foods. 

"Wines. 

Malt extracts and liquors. 

Distilled alcoholic liquors. 

Merchandise not otherwise 
classified. 



(Note: Class 18 was abolished Feb. 24, 1909.) 

An applicant for registration must specify not only the general 
class of merchandise in connection with which he intends to use 
his trade-mark, but must state also specifically the articles in 
that class upon which he has used the trade-mark he seeks to 
register. 

For instance, a manufacturer who might apply for the registra- 
tion of "Pendennis," as a trade-mark for smok- 
ing tobacco — to select a word at random — would 
find that it would not be satisfactory to the 
Patent Office to state in his application that the 
mark was being used in connection with Class 1 7 
— "Tobacco products." He would be required 
to state that his mark was being used on "smok- 
ing tobacco." After registration had been 
granted the Patent Office would not register 
another "Pendennis" trade-mark in that class 
of merchandise, to be used on cigars, for instance, 
for another applicant. Nor would the first 
registrant be obliged to apply for a new registra- 
tion if he should desire to extend the use of his 
trade-mark to cigars, or chewing tobacco, or any 




THE TRADE- 
MARK OF THE 
GENERAL 
ELECTRIC COM- 
PANY. AN EX- 
CELLENT USE OF 
INITIALS AS A 
TRADE-MARK. 



Trade-Names. 



Registration 
involves obli- 
gation on the 
part of the 
registrant 



other tobacco product. The law would protect him in the use 
of the mark for all articles of that class, but the rules of the Patent 
Office require applicants to give full particulars not only as to 
class of merchandise, but the specific articles on which the mark 
has been used. 

A result of the principle of trade-mark practice which limits 
the use of a mark to one class of merchandise is to be seen in the 
same name being used as a registered mark for unrelated articles. 
The name " Pompeian, " for instance, is used as a trade-mark 
for a face cream and also for wire netting for window screens; 
" Republic" is used for automobile tires as well as several other 
articles in different classes; "Packard" for pianos and auto- 
mobiles; and there is an "Ideal" hair-brush and an "Ideal" 
fountain pen. 

The law directs that the owner of a registered trade-mark 
affix, print or impress upon such trade- 
mark wherever it is used, or in close 
enough proximity to it to be easily seen, 
the words, " Registered in U. S. Patent 
Office," or the shorter abbreviated form, 
viz., " Reg. U. S. Pat. Off. " The trade- 
mark of Baker's Cocoa — the Baker chocolate girl — - 
reproduced on this page, shows how this should be 
done. 

If this notification is not used in connection with 
the trade-mark, the owner of the mark, in infringe- 
ment proceedings against an unauthorized user, 
cannot collect damages unless he can prove that he 
gave the other party formal notice, and that the 
unauthorized use of the mark was continued after 
notice. 

A trade-mark is not merely an advertising symbol. It is an 
Affixation essential of trade-mark validity that the mark be 
affixed to the goods. A device, or word, or phrase, 
or picture that is used only in circulars, advertisements, or on 
signs or letter-heads is not a trade-mark and cannot be pro- 
tected under the trade-mark laws. (It should be stated here 
that the unauthorized use of one other than the owner of such a 
device or wording may sometimes be prosecuted under the com- 
mon law — the law of unfair business competition.) 

A trade-mark may be printed, pasted, written, stamped, 
stenciled, branded, sewed, or woven upon the article with which 
it is used. In cases where it is not practicable to affix the mark 
upon the merchandise itself it must be affixed to the container. 




Reg. U. S. Patent Office 

A CELE- 
B R A T E D 
TRADE 
MARK. 



Rules of the Patent Office 



We have not the space here to go into a detailed description 
of the procedure of the Patent Office in considering trade-mark 
applications. This procedure, especially in cases where there is 
some doubt as to the validity of the mark, is highly complicated, 



14 



Trade-Marks. 



and can be followed successfully only by a solicitor experienced 
in trade-mark practice. 

The rules of the Patent Office require applications for registra- 
tion of trade-marks to be made in a certain conventional form. 
A drawing of the mark, of a certain specified size, must be sub- 
mitted with the application. Proofs of the mark, as actually 
used, must also be forwarded as exhibits in the case. 

If, on prehminary examination, the mark appears to be 
entitled to registration, a reproduction of it is printed at least 
once in the Official Gazette of the Patent Office. This publica- 
tion must be at least thirty days prior to the date of registration. 
The purpose of the publication of the mark in the Official 
Gazette is to allow opposition 
from any one who thinks its 
registration would conflict with 
his rights. Opposing an applica- 
tion is technically called an "op- 
position." An opposition serves 
to delay registration until the 
examiner in charge of inter- 
ferences considers the evidence 
submitted. 

Under certain conditions, re- 
jected applications may, on appeal, 
be taken up to the Commissioner 
of Patents. 

The number of rejected ap- 
plications is very large. Under 
the law of 1905, the total number 
of applications up to May, 191 2, 
was 62,500. 
The total number of registrations under the law is around 
42,000. This means that more than 20,000 applica- 
Numberof tions have been rejected in seven years. In other 
words, about two out of every three applications 
pass the gauntlet of Patent Office scrutiny, inter- 
ference and opposition, and are registered. 

Many of the defective applications fail because of a lack of 
competent advice in devising the proposed trade-marks, as well 
as because of inexperience in prosecuting the applications. 




THE CELEBRATED TRADE-MARK 
OF THE VICTOR TALKING MACHINE 



Rejected 
Applications 



CHAPTER III 
Analysis of the Requirements for Registration 

IN the preceding chapter we traced an outline of the main 
provisions of the Act of 1905 — the Trade-Mark Law. We 
intend to take up in this chapter each clause of the law ap- 
plying to. registration, and show how it works in actual practice. 
Great care should be taken by an applicant for registration 
A trade- mark ^^ ^ trade-mark, or his attorney, to avoid conflict 
will not be with a trade-mark that is already registered or 
registered if already in use (even if not registered) , provided that 
•' *V/st"n^or ^^ ^^ applied to the same class of merchandise as that 
wording with of the applicant. Lack of caution in this respect 
a known has caused interminable annoyance and litigation, 
trade-mark ^^ith Consequent financial loss. 

use^by^'an" In considering the question of conflicting marks, 

o.ther and .the Patent Office and the Federal courts hold that 
^**ds**^the ^^^ ^^^^ °-^ similarity is whether the marks are 
fa°m*e° d e^ sufficiently alike in appearance or wording, or sound, 
scriptive to mislead the average individual. 
qualities, or if 'pj^g word " Autola " as a trade-mark for cigars 

It resembles a i_ij j. -^1,1 . • -^ 

known trade- , was held not registrable owing to a prior registra- 
marksoclose- tion of the word "Auto-do" for the same class of 
''^ nf '"ion "*^ merchandise. In this instance, registration was 
refused on the basis of resemblance in sound as well 
as in appearance. 

"Lady Lee" having-been registered as a trade-mark for shoes, 
"Lady Like" was refused registration in 
the same class. C M 1 1 r^ T" IT Y 

"Certosa" as a mark for a brand of VlNUOItlA 
flour sufficiently resembled "Ceresota" — 

already registered—to cause its rejection. ^.u°meraTleTord''s 
Jrowellton failed registration as a ending in "tex." 
trade-mark for coal, on the ground that trade-mark used on 
another company's coal already bore the belts 
registered mark "Powell's Run." 

"Sodafoam" was considered close enough in resemblance to 
"Sea Foam" (already registered in the same class) to cause its 
rejection. 

" Uno " having been registered as a trade-mark for a medicine, 
an application for the registration of "Ino" in the same class 
was refused. 

Registration is refused a trade-mark when it consists of 
words describing a symbolic or pictorial device which has already 
been registered; or vice versa, when the wording has been 
registered first, registration for the symbol is refused. For 

15 



16 Trade-Marks. 




instance, the Patent Office has held that a trade-mark consisting 
of a conventional representation of a bouquet of flowers is 
identical in meaning with another mark consisting of the word 
" Bouquet," applied to the same class of merchandise. In either 
case, the goods would be called "Bouquet Brand." 

Agreement among owners of conflicting marks is not recog- 
nized by the Patent Office. An interest- 
ing example of this occurred in the 
attempt to register the word ' ' Nay assett. ' ' 
The word "Nassac" had already been 
registered for the same class of goods 
and the registration of " Nay assett" was 
refused on the ground of similarity. 
Soon afterward, the owner of the 
THE TRADE-MARK OF " Nayassctt " mark madc a ncw appllca- 
CRYSTAL DOMINO SUGAR, tlon, accompanicd by the formal con- 

NOTE THAT THE REGISTRA- ^p^4- „f ^i,„ nwnpr'; nf thp "Na«;<^ar" 
TioN OF A PICTORIAL REP- ^^^\ °^ ^/^^ owncrs oi tnc i\ assac 
KESENTATioN OF A DOMINO, mark. Thc Commissioner of Patents 
OR MASK, INCLUDES THE hcld that thc law did not provide for 
woRD^^'^DOMiNo " ^^ ^^^ agreement between owners of^ con- 
flicting marks, and the registration of 
"Nay assett" was refused accordingly. 

About two years ago a manufacturer in a Middle Western 
city became interested in a new metal polish and decided to put 
it on the market. After long consultation with advertising men 
and salesmen, a name was selected. This name was suggestive 
and short, with a snap to it, that made it stand out in the 
memory. Many thousands of labels were ordered and packages 
of the article were given to the traveling salesmen of the concern 
to be used in getting orders from retailers. Booklets and 
literature had been written and mailed, and the business was 
beginning to take shape, when, to the surprise of the manu- 
facturer and his associates, his application for trade-mark 
registration was rejected by the Patent Office for the reason that 
the mark had 'already been registered. Then followed a hasty 
trip to a trade-mark attorney and a search of the Patent Office 
records was made. Investigation of the register showed that 
the same name had been registered by an Eastern concern for 
a metal polish soma years ago. About this time a letter arrived 
from the attorney of the Eastern firm, with a statement to the 
effect that the owner of the trade-mark considered this un- 
authorized use of the mark an infringement and intended to take 
legal action in the matter. A month or two was spent in trying 
to make some arrangement with the Eastern concern, with the 
final result that the trade-mark had to be dropped, and some- 
thing new devised. 

In this case a full year was lost, and a considerable amount of 
money was wasted, by reason of ths failure of this manufacturer 
to have a search made of the Patent Office records. He made 
the mistake of considering the matter of trade-mark registration a 
small detail, and trying to attend to it himself. A competent 
solicitor would have saved his fee a thousand times over in this 
case. 



Trade-Names. 



17 



M©T©M ©IL 

ANOTHER EXAMPLE OF A 
TRADE-MARK ENDING IN "o." 
THIS IS A COINED WORD, 
TEXAS" AND 



This prohibition is not covered by the trade-mark law, but 
is one of the provisions of the Act of Congress in- 
A trade-mark corporating the American National Red Cross 
th^^^n^^nia (approved Jan. 5, 1905). The act of incorporation 
of^the"Amer^ States that it shall not be lawful for any person or 
ican National corporation to usc in trade, or for purpose of ad- 
nol re°**is- vertisement, "the sign of the Red Cross" or "any 
trable insignia colored in imitation thereof," unless such 

person or corporation was entitled to the use of such 
insignia at the time of the passage of the act. 

This exception, which was intended 
to safeguard the interests of those who 
had long used the Red Cross sign as a 
trade-mark, covers the Red Cross mark 
of the well known druggists' specialty 
house of Johnson & Johnson, the Red 
Cross labels used on a brand of shoes 
made by Krohn, Fechheimer & Company made from 
of Cincinnati, the Red Cross mattress "company." 
manufactured by a Boston concern, and a few other users of 
this device. . . 

The law, as it stands, is rigidly enforced in regard to all new 
trade-marks containing Red Cross devices. 

An unusual argument was made the basis of an application 
for registration of a label for a cough syrup, on which the emblem 
of the Red Cross was printed, accompanied by the words " Red 
Cross." When registration was refused, the applicant sought 
to amend the label by striking out the Red Cross emblem, while 
leaving the words intact. He argued that the Red Cross in- 
corporation act prohibited only the use of the "sign of the Red 
Cross" and not the words. The application was rejected on 
the ground that it was an attempt to evade the spirit of the law. 

A trade-mark is essentially an exclusive possession. When 
it ceases to be exclusive, it ceases to be a trade- 
Trade- marks mark, in the true sense. It is apparent, therefore, 
'**^* tWe of ^^^^ ^^ ordinary word, descriptive of the goods with 
th"** ^goods which it is used, cannot be set aside as the exclusive 
with which property of any manufacturer, to the detriment of 
use/ or'oi Others producing merchandise of the same character. 
the quality or The wording of the law on this point is clear, and 
character of the Patent Office is strict in its interpretation. But 
'\^no°re**iV "^sspite this condition, many applications, destined 
t/abTe to be rejected, are made every year for the registra- 

tion of descriptive marks. We give here a few 
examples of trade-marks, refused registration on the ground of 
being descriptive. 

The word "Kantleek" was refused registration as a trade- 
mark for a hot-water bag. The Patent Office examiner held 
that thie word was composed of "Can't" (misspelled "Kant") 
and "Leak" (misspelled "Leek"), and that it was intended to 
convey the idea that this particular bottle could not leak. The 



18 Trade-Marks. 



attorney for the applicant presented an argument to the effect 
that the word was composed of two German words, "Kant" 

and "Leek," that had meanings 
quite different from the EngHsh 
words with the same sound. This 

contention was too subtle for the 

<Tr»aoM.,k Ree. ~s.T.,.off.c^ Patent Office to grasp, and regis- 

ALTHouGH THIS MARK HAS BEEN tratiou was rcfuscd. 
REGISTERED IT HAS BEEN DE- Thc word " Naphtha," uscd as 

GLARED A DESCRIPTIVE WORD BY A ^ ^^^^^ f^j. ^ soap with naphtha 



RUBEROID 



FEDERAL COURT, AND THEREFORE . ^. ^ 111^1 

NOT PROTECTABLE. as an mgredicut, was held to be 

descriptive, and therefore not 
registrable as a trade-mark, to the exclusion of the goods of 
other manufacturers, although the owner had advertised it 
extensively. 

"Mello" as a mark for chewing-gum was considered descrip- 
tive, being simply a misspelling of the word "mellow." 

Many applicants for trade-mark registration seem to think 
that the mere misspelling of a descriptive word, or some fanciful 
device in lettering, will remove the word from the descriptive 
class. This is a belief that has no basis in fact, for no matter 
how a word is spelled or lettered, it is descriptive if it conveys 
information of a descriptive character. 

For instance, the word "Bestok" was rejected as a mis- 
spelling of "Best Stock"; "Unxld" as a misspelling of "Un- 
excelled " ; " Kid Nee Kure " as a misspelling of " Kidney Cure " ; 
and "Pittsburgh Pump," printed with hyphens between the 
letters— P-I-T-T-S-B-U-R-G-H P-U-M-P— was refused registra- 
tion as being both descriptive and geographical. 

The courts have held that the word "Elastic," used to desig- 
nate drawers having an elastic seam, 
is descriptive, but the same word is 
used in a fanciful sense and is valid as 
a trade-mark when applied to sectional 
>1 jl bookcases. 

<10Tn.6S ^ manufacturer of hooks and eyes 
applied for registration of the phrase 

A CLOTHING TRADE-MARK. <,S^ ^ 2 TVT t " j. J 1 

THE MISSPELLING OF THE Rust ? Ncvcr! as a trade-mark. 
PHRASE "YOUNG FELLOW " Registration was refused, as the mark 
DOES NOT INCREASE ITS ^as hcld to bc descriptive, indicating 

VALUE AS A TRADE-MARK. , 1 , ii_ 1 1 j -^ u ° 

ITS ELIGIBILITY FOR REGIS- t^at thc hooks and eyes would never 

TRATION WOULD BE THE rUSt. 

SAME IF IT WERE CORRECTLY Arbitrary numbers are obviously 

SPELLED AND PRINTED IN • . i 1 .t j 1 t, j- xU 

oRDiNARY TYPE. registrable as trade-marks, but the 

applicant must be prepared to establish 
his contention that the numbers are really arbitrary and meaning- 
less. In certain trades numbers are used to designate grades of 
a product cominon to the trade, and, in that case, the grade 
numbers are descriptive by common usage. A plow manufacturer 
applied for registration of the symbols "A No. i," "No. i " and 
"AX No. I," as trade-marks for plows. It was shown, upon 




Trade-Names. 19 



examination, that these symbols are used by many plow makers 
to designate grades, and they were, therefore, ordinary descrip- 
tive trade terms. Registration was refused. 

The prohibition against trade-marks descriptive of the 
character or quahty of the product applies with equal force to 
trade-marks descriptive of the container or package. A flour 
manufacturer put up his product in barrels of a distinctive 
character — white and dark staves alternating. He applied for 
registration of a mark consisting of a pictorial representation of 
the striped barrel. This mark was considered descriptive, and 
registration was refused. 

A Philadelphia candy manufacturer applied for registration of 
the word "Fussy," as used in the phrase "A fussy package for 
fastidious folk." The Patent Office held that the word "fussy," 
as used in the phrase, was merely a descriptive term — an 
adjective qualifying "package" — and registration was accord- 
ingly refused. 

The word "Spearmint," being a descriptive word, was re- 
fused registration as a trade-mark for Wrigley's Spearmint 
chewing gum, but the representation of a spear was considered 
registrable. 

Various applicants have sought registration for trade-marks 
that, while they are meaningless to English-speaking people, are 
realty descriptive terms taken from foreign languages. Such 
words are not registrable, for the Patent Office makes no dis- 
tinction between languages. 

The phrase "Lait de Violettes," meaning in French "Milk of 
Violets," was rejected as a mark for per- 

" Elegancia, " the Spanish equivalent I^/mSHS^E^QS? 

of the English word "^Elegant," was re- .»»:..■- o.. 

fused registration as a trade-mark for it is not generally 

cigars known that this is an 

A descriptive word in a language as ^^;-f^\ Zde-mAT" 
little known as Esperanto is neverthe- 
less unregistrable. "Saniga" means "Sanitary" in Esperanto, 
and it has been accordingly refiised registration on the ground of 
being a descriptive term. 

In considering the question of descriptive marks, the differ- 
ence between description and suggestion should not be overlooked. 
Suggestiveness is a highly desirable quality in a trade-mark, and 
many excellent and legally valid marks _ 

are suggestive. ^^tt^a^Ba^^^99 

The name "Hydegrade," a regis- 
tered trade-mark, applied to a well- 
known fabric, is suggestive of high " ^_, ^^ 

,., i_ . -1 • 5 J ■ J-- tj. a well-known trade- 

quahty, but it is not descriptive. It mark, another example 
is a coined word, composed of the of the large numbers of 
elements "Hyde" (name of owner) and marks consisting of words 

,.^ J ,, -^ ^ ^ ending IN 'O 

Grade. 
Another example of an excellent suggestive mark is 
"Rubdry" applied to towels. 



Slum 



20 Trade-Marks. 



Pictorial marks are often highly suggestive without being 
descriptive. The Baker Chocolate girl, depicted in the act 
of serving a cup of cocoa, suggests daintiness, taste, beverage, 
quickness in serving, and refreshment. 

The word "Ideal," used in connection with a fountain 
pen, is considered fanciful, and not descriptive. It would 
seem that a very fine distinction is made here, as this word 
is an ordinary descriptive word, commonly used to express 
a state of perfection, as in the expression "An ideal day." 
It may be said, on the other hand, that nothing ever reaches 
an ideal condition, and, in that sense, the mark may be con- 
sidered fanciful. 

Geographical names, like descriptive terms, are the common 
A h property of all who use the language. No one 

ical^name'or manufacturer can appropriate such a term for his 
term is not own exclusive use as a trade-mark unless he uses it 
registrable as \^ OlXi arbitrary or fanciful sense. The only excep- 
e-mar ^ions to this principle are to be found in the case of 
manufacturers who have adopted geographical terms as their 
trade-marks and have used them so long, without opposition or 
protest, that they have acquired a common law right to their 
exclusive use. 

Among the geographical marks rejected by the Patent Office 
are the following : 

"Yale," applied to hosiery; "Cloverdale," for canned fruits 
and vegetables; "Red River Special" as a mark 
for agricultural implements; and "Aurora," on 
shoes — the name "Aurora" being applied to 
localities in at least twenty states of the 
Union. 

It would seem in the light of common-sense, 
that in the last-named case (that of "Aurora") 
the ruling of the Patent Office is on a very narrow 
basis indeed. The word "Aurora" has no 
geographical significance to the average person. 
It calls up a mental image of the dawn. If this 
A GOOD EX- case, and some others like it, are considered valid 
usE^ OF °A suG^ precedents, every applicant for trade-mark 
GESTivE SYMBOL registration must be prepared to submit his ap- 
As A TRADE- pHcatiou to the stern criticism of the Post Office 
c o^^N "n ^Tti o'n Directory, with its catalogue of fifty thousand or 
WITH BAY STATE morc naincs. (It is interesting to observe that, 
BRICK AND CE- i^ a latcr case, the Patent Office allowed the 
MENT COATING. registration of "Aurora " as a trade-mark for oils, 
lard, syrup and honey. Aspegren & Co., ex parte, loo Official 
Gazette, 684.) 

"Tabasco" was refused registration as a mark for a sauce on 
the ground that it is a geographical term. Tabasco being the 
name of a state in Mexico. 

"French" was rejected as a trade-mark for paint. On the 
other hand, "Celtic" has been registered as a trade-mark for tea 




/ 



Trade-Names. 



21 




THE TRADE-MARK OF THE 
NEW ENGLAND CONFECTION 
ERY COMPANY. THIS IS A 
COINED WORD, MADE UP 



The word "Celtic" has reference to a race, of which the Irish are 
only one branch. It is not applied to any particular country or 
section of the globe. 

The map of the United States has been refused registration 
as a trade-mark_ f or sugar. 

"American Lady" was refused registration on the ground 
that the word "American" is geographical. 

When a geographical term, applied to merchandise, is used in 
a fanciful or arbitrary sense — that is, 
when it conveys no deception in regard 
to the origin of the merchandise — it may 
be registered as a valid trade-mark. 

"Dublin" is a valid trade-mark for 
soap, although the soap is made in 
America. In the case concerning this 
mark it was shown that it is the practice 
of soap manufacturers to call their 
products "Limerick," "Scotch," 
"Irish," etc., and that the buying pubHc from the first letters of 
is aware of the fanciful use of these ^^J^^g^^^l ^^ ^^^ "°^- 
names and is not deceived thereby. 

"Vienna," applied to bread, is considered valid. No one 
expects bread made in Vienna to be sold in America, consequently 
no one is deceived by this fanciful use of the word. 

"Gibraltar" is registered as a trade-mark for belting. It is 
true that Gibraltar is a geographical name, but its suggestive- 
ness in regard to belting conveys the mental picture of strength, 
rather than the idea of origin. 

The student of trade-mark conditions, having learned how 
rigorously the Patent Office interprets the section of the law 
applying to the registration of geographical terms, will perhaps 
be puzzled by the number of trade- marks of this class which seem 
to be valid and well-established. 

The explanation of that is that many geographical names, 
which could not have been protected 
ah origine as trade-marks, have ac- 
quired a secondary meaning by long 
and exclusive use by a particular manu- 
facturer. Such marks fall within the 
protection of the common law. 

Some of these common law marks are a geographical name 
registered under the ten years' clause. Sw^c'lTu'^r^'' ''''^ ^^''" 

Among well - known geographical 
trade-marks may be mentioned "Bristol" applied to fishing- 
rods; "Kalamazoo" applied to stoves; "Manhattan," the name 
of a brand of shirts; and "Elgin," " Waltham, " and " Illinois," 
the names of watches. 

The U. S. Sanitary Manufacturing Co. was refused registra- 
tion for a trade-mark consisting of the letters " U.S. " with a back- 
ground of a shield similar to that of the conventional United 
States shield. 




22 



Trade-Marks. 



must not con- 
sist of the flag 
or coat of 
arms or other 
insignia of 
the United 
States, or of 
any state, or 
municipality, 
or any simu- 
lation thereof 



ual, firm 
corporation 
can be regis- 
tered only on 
certain con- 
ditions 



The coat of arms of the United States is not registrable as 
A trade-mark ^ trade-mark even under the ten years' clause. It 
has been held that its use in that connection is 
opposed to public policy. {American Glue Com- 
pany, ex parte, 120 Official Gazette, 324.) 

The registration of the coat of arms of the state 
of Maryland was refused registration, application 
having been made under the ten years' clause. 

In another case, registration of a simulation of 

the shield of the United States, with alternate red 

and white stripes, was refused registration. 

It would seem at first consideration that if the object of using 

a trade-mark is to indicate the origin of a com- 

-^ *»'?«^^-mark modity, the most effective mark would be simply the 

slsts'*^ merely maker's name — "James Brown" for goods made by 

of the name Jamcs Brown, and "William Jones" for goods made 

of an individ- by William Jones. 

This logic would be indisputable if there were a 
different family name for every individual. But 
names are limited in number — there are eleven 
pages of Smiths in the New York City Directory — 
and every man has a natural and inalienable right 
to use his own name. It is obvious that a family name lacks 
the exclusiveness that is an essential quality of a legitimate 
trade-mark. 

But a personal name may be written, or printed, or stamped 
in such a way that the peculiarities 
of writing, or printing, or design, 
may dominate the name and be 
the most conspicuous feature of 
the combination. 

The trade-mark Act provides 
that "no mark (shall be regis- 
tered) which consists merely in 
the name of an individual, firm, corporation, or association, not 
written, impressed or woven in some particular or distinctive 
manner, or in association with a portrait of the individual." 
In this clause the framers of the Act have endeavored to put a 
logical restriction on the injudicious use of personal names as 

trade-marks and the endless 
litigation that has always re- 
sulted from this practice. 

The names of historical 
personages (not living) may be 
registered as trade-marks, but 
the name of a living person 
cannot be used without his 
consent. 

The phrase "Gibson Girl" 
as a mark for shoes was re- 
Gibson ' ' obviously referred to 




THIS TRADE-MARK OF A JELLY 
POWDER IS A COINED WORD, MADE 
BY SPELLING THE PROPRIETOR'S 
NAME "HANSEN" BACKWARDS 



°/ *G^ncttc> 



WITHIN THE MEANING OF THE 
STATUTE THIS WAY OF PRESENTING 
THE NAME "GILLETTE " IS CONSIDERED 
DISTINCTIVE. NOTE THAT THE DEVICE 
DOMINATES THE NAME, AND PUTS IT 
INTO A POSITION OF RELATIVELY 
SECONDARY IMPORTANCE. 

fused registration, as the word 



Charles Dana Gibson, a living artist. 



Trade-Names. 



23 



In case of the registration of names of individuals, firms or 
corporations the restriction of the law that the name must be 
shown in some "particular or distinctive manner" has been 
interpreted to mean a presentation of the name in such a 
form that the peculiarities of lettering, or WTiting, or of an 
accompanying device are so pronounced that they dominate 
the name and throw it into a position of secondary importance. 
The meaning of this clause is best shown by means of examples 
of proper names, registered and used as trade-marks. A 
number of trade-marks of this character may be found in this 
book. 

Many portraits of living persons are used as trade- 
marks — notable among them being the face of W. L. Douglas, 
shoe manufacturer; and the 
portrait of Thomas A. Edison, 
used in connection with his 
facsimile signature, as a trade- 
mark for Edison phonographs. 
Among historical char- 
acters the picture and signature 
Ten "consent of Robert Burns, the poet, are 
of the person combined in a trade-mark for 
cigars; the face of Benjamin 
Franklin is used as a trade- 
mark for the Saturday Evening Post, and 
will be found printed on the editorial page 
of each issue; Bismarck is a name for 
collars; Napoleon is used in connection 
with a brand of flour; and " Bob " Ingersoll 
is the trade-mark of a cigar. 

It is a definite principle of the common 
law that fraud vitiates any transaction 
that it touches. A trade-mark that is deceptive and misleading 
cannot be protected, no matter if its registration should be 
accomplished. 

"Ejoights of Labor" was refused registration as. a trade-mark 
, ' ~"\ for whiskey, as the evident intent of the mark was 

•^*-^^®"™^i' ^° inislead purchasers into a belief that the whiskey 
*"""" ' ' ' ' - ■ - - - - labor 



A portrait of 
a living indi- 
vidual is not 
registrable as 
a trade-mark 
unless the 
application is 
accompanied 
by the writ 



whose por- 
trait is used 




BEG. U. S. PAT. OFF. 

THIS PORTRAIT OF 
BENJAMIN FRANKLIN 
IS THE TRADE-MARK 
OF THE SATURDAY 
EVENING POST. 



t^ra"ble?f^ft ^^^ produced by the Knights of Labor, a 
conveys in Organization. 

anywaya A similar case is exhibited in the attempt to 

tatfon^olThe' register the name "Masonic" as a mark for cigars. 
article ' Registration was refused. 

~ The name "Malt Myrrh" was refused registra- 
tion as a trade-mark for malt liquors when it was shown that the 
liquors did not contain myrrh. 

The name "Old Country Soap, " used in connection with soap 
in such a way as to lead purchasers to believe that the soap was 
manufactured in Europe, was held by the court in the case of 
Wrisley v. Iowa Soap Company to be deceptive, and protection 
against infringement was refused. 



24 Trade-Marks. 




A false representation on a trade-mark to the effect that the 
article is patented when it is not, is sufficient to vitiate the trade- 
mark. 

A trade-mark registration does not protect when it is used on 
an article different in character, or com- 
position, or origin, from that for which 
it was registered. This principle is very 
important. A manufacturer cannot do as 
he pleases with his trade-mark without 
regard to the rights of the public. If the 
article for which it was registered is changed 
essentially in composition, or in purpose, 
AN AUTOMOBILE thc trade mark ceases to be of value. 
TRADE-MARK. Tradc-marks under the United States law 

are always specific and associated with a 
certain definite article, and not with the proprietor's general 
business. 

In Great Britain and Canada there are general trade-marks, 
which a manufacturer may use on any article he makes, no matter 
to what diverse classes these articles belong. 

A trade-mark which is technically a valid mark, will be 
refused registration if, in the opinion of the Patent 
A trade-mark Office, its registration would be opposed to public 
trable Sf^its policy. A few examples will show what we mean. 
registration The phrase "Ask the -Revenue Officer" was re- 
would be jected as a mark for whiskey. The Patent Office 
poticy ^" '*^ held that this mark, appearing on bottles or 
barrels, would lead the public to believe that the 
contents had the indorsement of officers of the government. 

For a similar reason the word ' ' Government ' ' was refused 
registration as a mark for loose-leaf binders. 

The name of a living Ex- President cannot be registered with- 
out his written consent (as in the case of any other living person) , 
and the name of an Ex-President, not living, cannot be registered 
at all. The use of the name of an Ex-President as a trade-mark 
is not considered consonant with the high dignity of the Presi- 
dential office. 

Several applications have been made within the last few 
years for registration of the names or portraits of Ex- Presidents. 
The signature and portrait of Thomas Jefferson, combined in a 
trade-mark for cigars, was refused registration. 

The words "Roosevelt Rose" were rejected on application 
for registration, the rejection being partly because "Rose" had 
been registered on a previous application, and partly because 
Roosevelt is a living person. 

A trade-mark cannot be a color, because the number of colors 
Other _ is limited, and it would be manifestly unfair to give 

Restrictions i\^q exclusive use of a color to any individual. 

The use of the flag or coat of arrns of any foreign power is 
prohibited as a trade-mark. This restriction holds even when 
the foreign power agrees to the use of its insignia. The 



Trade-Names. 25 



Russian government consented to the use of its coat of arms 
as a trade-mark in the case of an appHcant before the United 
States Patent Office, but registration 
was refused. The law is mandatory, 
and is not affected by agreement. 

Any design or picture which has 
been adopted by a fraternal society as 
itq pmblem I't^ not rpcricitrnblp pq a there are so many 
Its em Diem is not registraoie as a trade-marks ending in 

trade-mark. "o" — such as crisco, omo, 

For obvious reasons, scandalous or onoto, quixo, pebeco— 



jELL-0 



immoral matter is refused registration. J^^^^ge'r TosIesI ™ 
A trade-mark cannot be a shape, or tinctiveness 

a package, or a container. 

A trade-mark cannot be the article of merchandise itself, 

for the "mark" must necessarily be different from the thing 

marked. 



CHAPTER IV 
The Elements of a Good Trade-Mark 

stricted. . number of restrictions imposed by the law 

It is true that the numoer oi i language is virtually 

and the courts IS cons.d^^^^^^^^ of letters 

mexhaustible wi^th Its mnnix p ^^ construction must be 

Si^tt^i.^?lis^trSie^s of designs and symbols which ar. 
registrable and valid under the law. 

r^olXwrVke Calox Coca-CoK Omo, Jap-a-lac. 
Crisco, Pebeco, Celluloid Plexo (a trade- 
mark for suspenders- also fo/^ toilet 
preparation) , Sapolio, Cravenette Jell-O 
Kodak, Uneeda, Pro-phy-lac-tic, Lrex 

""^A^sjfmboZ, like the Baker chocolate 
girl- the Prudential Insurance Com- 
pany's trade-mark, which consists of a 
^Sure of the Rock of Gibraltar; the 
Merrimack duckhng; the spear o^ 
Spearmint chewing gum; the P^^i^an 

painter , used on Bay State brick ana ^^^ ^^^^ ^^ Gibraltar 
rpmpnt coating; the Ford automobile ^^^ long been the trade- 
cement coaxmg, ^ineed pyramid; mark of the prudential 

mark, consisting ot a wingea py , insurance company, it 

or the representation of a fiasK or ^^^^^^^^ ^^ prudential 
Hnmino used on packages of Crystal policies, and is used in 
DomTno sugar; or^he painter boy of conventional trade-mark 

^^^i^foXn^r^n^/rrZo. ^vords, and a ^y.n.ol, like Thomas 

A Edison's portrait and signature, used 

t conSon^with Phonographs a picture 

of a black cat and l^^T^'^'tvthetrTde- 
used as a hosiery trade-mark, the traae 
mark of the Vacuum Oil Company, con- 
^st'n- of a picture of a gargoy e m con- 
nection with^the word "Gargoyle"; or a 
Representation of a swan ^^^^^"^Pf^^^^^^J 
the word "Swan." used o^\^°)J.^^tain pens ^^^.^^ .^ ^ 

pictule^orotw rnn^n;^ IX^^ of Robert Burns, 
used on cigars. 

26 




A trade-mark of 

the vacuum oil com- 
pany. 



Trade-Names. 



27 



A word, or words, used in a fanciful {non-descriptive) sense, 
like "Cat's Paw," a trade-mark for rubber heels; "Bachelor's 
Friend," a suggestive trade-mark for hosiery; the word "Ribbon," 
a mark for a tooth-paste; " Republic, " used on automobile tires; 
"Velvet," a trade-mark for smoking tobacco; "Onyx," the 
trade-mark of a well-known brand of hosiery; "Ivory," which 
stands for a famous brand of soap; "Diamond," a name for 
tires; "Arrow." used on collars; " Blue- Jay, " a trade-mark for a 
corn-plaster; "Big Ben," used on alarm clocks; "Lifebuoy," 
the name of a soap; or "Occident," the name of a flour. 

A historical or mythological character, like Juno, King William, 
^ Stonewall Jackson, Cupid, Venus (there is a 

VV lead pencil carrying this trade-mark), Samson 

^r ^L (applied suggestively to a brand of rope), or 

^^ I^W Apollo (the name of a piano-player). 
^ wBtm V Initials or arbitrary numbers, like the "G.E." 

^kl l^r trade-mark of the General Electric Company; 
^^ ^r the number "4711," applied to perfumery and 

^^T toilet articles; "61," a floor varnish; "E-Z," 

the suggestive trade-mark of jar used in preserv- 
ing fruits; "O.K.," the name of a clip to hold 
papers together; "B.V.D.," the trade-mark of 
a well-known line of underwear; or the big " H " 
enclosed in a diamond-shaped design, used as a trade-mark on 
Heisey's glassware. 

The business name of person, firm or corporation when written, 
printed, impressed or woven in a distinctive manner, 
or in association with a portrait, or in an auto- 
graphic form. An example of this type of trade^ 
mark is the word "Cross," reproduced here. 
The name "Gillette," used on safety razors, is 
enclosed in a diamond and crossed by an arrow. 
A well-known trade-mark of this character is 
the name "Stewart Hartshorn," found on most 
shade-rollers. 
Marks that may be technically defective are registrable under 
the ten years' clause if they have been in exclusive use by the ap- 
plicant for ten years preceding 1905. The word "Faultless," 

registered by E.Rosenf eld & Com- 
pany, of Baltimore, as a trade- 
mark for garments, belongs to this 
class. "Faultless" is, of course, 
descriptive, but it is nevertheless 
■%„^ ^ ^ "^ registrable under the ten years' 

clause. Another mark of the same 

A VERY EFFECTIVE TRADE-MARK, kiud COnslstS of thc WOrd " CoW- 
USED WITH BISCUITS SOLD IN „^ j ., , -, , r Y^ 

PACKAGES. ai^o- — a trade-mark for shoes. 

Coward is the proprietor, and un- 
der the Act of 1905 his name has no eligibihty as a trade-mark 
unless it is written or printed in a distinctive manner. But his 
name has beenused as a trade-mark since 1868, and, conse- 
quently, falls within the provisions of the ten years' clause. 



THE TRADE- 
MARK USED ON 
HEISEY GLASS 
WARE. 



s 






28 



Trade-Marks. 



9- 



It is easy enough to devise a trade-mark that will comply with 
the letter and the spirit of the law. But a trade-mark should 
be something more than merely registrable and protectable. 
Think of the immense advertising and selling effort that must 
be brought to bear to overcome the inertia of a meaningless or 
unsuitable trade-mark. 

The Nine A proposed trade-mark should not be adopted 

De*sVrable ^^^^^ every one of the following questions can be 
Trade-Mark answered affirmatively in regard to it: 

1, Is it easy to speak? 

2. Is it easy to remember? 
Is it easy to spell ? 
Is it simple in design? 
Is it attractive in sound and appearance? 
Is it suggestive of the good qualities of the merchan- 
dise ? 

Is it different from other trade-marks of the same 
class ? 

Can it be affixed to the goods with which it is to be 
used ? * 

Is it registrable and protectable? 

Few trade-marks in commercial use can stand these tests, 
because most marks have been designed without any clear per- 
spective of the part they were to play in business. 

As a matter of interest and instruction, let us take several 
well-known trade-marks, at random, and put them through the 
list of test questions. 

Opening a current magazine, the first trade-mark we see is 
"Postum," the name of a substitute for coffee. Postum is easy 
to say and remember and spell. It 
is simple, but not particularly attrac- 
tive in sound. It has no suggestive- 
ness, except the artificial suggestive- 
ness of familiarity. It is distinctive, 
registrable, and is virtually infringe- 
ment-proof. If the figure loo should 
be set down as denoting a perfect 
trade-mark, then Postum should be graded at about 8o. It 
wholly lacks suggestiveness, and it is not attractive though not 
displeasing. 

The next mark that attracts our attention in this magazine 
is "Siwelclo," a coined word, applied to a flushing device used 
in connection with bathroom toilets. Siwelco is not easy to 
pronounce, it is not euphonious, it is not easy to remember or 
to spell. It is the reverse of attractive in sound, and it carries 
no suggestiveness. It is registrable and protectable. 

The next trade-mark is "O.K.," applied to paper fasteners. 
This mark possesses every good feature. It is suggestive in the 



WOLF'S 




HEAD 



A TRADE-MARK FOR LUBRl 
GATING OIL. 



Trade-Names. 



29 




THE FORD AUTOMOBILE 

TRADE-MARK A PYRAMID 

WITH WINGS. 



sense that "O.K." means, in ordinary speech, "all right, satis- 
factory, good." These fasteners are used in offices. The symbol 
"O.K."' has a distinct meaning in commercial language. We 
are of the opinion that "O.K." used as a trade-mark for office 
supphes should be graded loo. 

"Cat's Paw," a trade-mark for rubber heels, is the next. 
It is an example of a word that is suggestive in the wrong way. 
"Cat's Paw" suggests the soft, quiet tread of a cat — and of 
rubber heels. At first glance it would seem that "Cat's Paw" 
is an ideal name. But those who sell rubber heels say that the 
noiseless tread (or "sneaky walk," as one shoemaker stated it) 
is the greatest of all drawbacks to the sale of rubber heels. In 
short, the name is suggestive, but suggests a defect. 

The next trade-mark that comes to hand is the Ford auto- 
mobile mark, reproduced on this page. 
It should be noted at the start that the 
mark as it stands, with the phrase 
"The Universal Car" as a part of it, is 
not registrable, as it contains a de- 
scriptive phrase. The rest of the de- 
sign is registrable, and, after registra- 
tion, the descriptive phrase might be 
imposed upon it without destroying its validity. 

In considering this m_ark the reader should bear in mind that 
an automobile trade-mark must be of such character that it 
can be worked out in metal and attached to the front of the 
radiator. The Ford device is suited to this form of affixation. 

This trade-mark shows a pyramid with wings. Its symbolism 
is the pyramid for strength and solidity, and the wings for speed. 
Speed and solidity — two desirable qualities in an automobile. 
The symbolism is not apparent until explained, and the mark 
is rather meaningless to the ordinary observer, but, considering 
the restrictions that surrounded its creation, we are of the 
opinion that it is a very good trade-mark. 

Next we come to "Ralloc," which is the trade-mark of a 
collar-retainer. The word is obviously the w^ord ' ' Collar ' ' 
spelled backward. It is not euphonious, or attractive, or dis- 
tinctive in any way. This mark is 
an example of a large class of trade- 
marks which bears upon them the evi- 
dences of only one purpose — and that 
is, to produce something which will 
not be rejected by the Patent Office. 
"Crex" is an excellent trade-mark. 
It is an adaptation of the word "Carex," 
which is the botanical name of a sedge- 
like grass which may be woven into a 
■■ we have "Crex." This name sticks 



ABSORBINEfJs 



A REGISTERED TRADE- 
MARK WHICH IS SO SUG- 
GESTIVE THAT IT APPROACHES 
WITHIN A hair's BREADTH 
OF BEING DESCRIPTIVE. 



fabric. Dropping the "a, 
in the memory; it is easy to spell, easy to say, and is quite dis- 
tinctive. It lacks inherent suggestiveness, but it is the kind 
of word that may be readily popularized by advertising. 



30 



Trade-Marks. 



There is a toilet preparation widely advertised and sold under 
the name " Sempre Giovine," meaning "always young." This 
trade-mark must be a tremendous drawback to the success of 
the article with which it is associated. It cannot be pronounced 
properly except by those who have taken lessons; and it is 
difficult to remember. To an English-speaking person it con- 
veys no suggestion. Foreign words should be avoided in de- 
vising trade-marks. People do not like to ask for things by 
names which they cannot pronounce. 

The trade-mark affixed to the linens sold by McCutcheon, 
of New York, a store famous for the quality of its fabrics, con- 
sists of the picture of an old-fashioned spinning-wheel, without 
wording. This is a very good trade-mark. It brings up a 
mental picture of the slowly- wrought hand-woven linens of our 
grandmothers' time, fabrics that looked good and wore well. 

There are trade-marks so admirably adapted to their pur- 
pose that they seem to be the work of genius. "Uneeda, " 
applied to crackers in a sealed package, is such a trade-mark. 
" Rainbow," a trade-mark for dyes, is another happy inspiration. 
This name makes one think of the fine colors and delicate tones 
of a rainbow. It stimulates the idea that these dyes emulate 
a rainbow in beauty. " Skidoo " — a trade-mark used in connec- 
tion with a small gasoline engine for launches — is another trade- 
mark that touches the top notch of merit. It suggests agility 
and lightness, and the ability to get in motion and scurry away. 

Special Notice 

An enormous waste of mental effort expended by manufac- 
turers and their representatives in devising unsatisfactory trade-, 
marks might be avoided by consultation with us — either per- 
sonally or by mail — before any work is done in the way of 
devising a mark. 

There are more than 40,000 registered marks in existence, 
and approximately 100,000 unregis- 
tered trade-marks that have been 
used long enough to be capable of 
protection under the common law. 
One can see that the chances are large 
of a new trade-mark user deciding 
upon a mark that is already in use. 
Many marks are sent to us to be reg- 
istered on which it is evident that 
much thought has been expended, 

but which are so nearly like other marks already in existence 
that their registration and protection are impossible. 

A search of the Patent Office files, for which we charge only 
$5.00, generally saves many times its cost in mental work and 
vexafion. 



»iA2o 



TRADE-MARK OWNED BY 
THE KALAMAZOO SUSPENDER 
COMPANY. IT IS A COINED 
WORD, THE ELEMENTS OF 
WHICH ARE TAKEN FROM THE 
NAME "KALAMAZOO." 



CHAPTER V 

PART I. 

INFRINGEMENT 

I. 
Trade-Marks Defined 

IMany clear and terse definitions of trade-marks are to be 
found among various decisions rendered by both the Federal 
and State courts of this country; for instance, in Ball vs. Broad- 
way Bazaar, 87 N. E. 674, the Court of Appeals of the State of 
New York says: 

"A trade-mark may be tersely defined to be any sign, mark, 
symbol, word or words, which indicate the origin or ownership of 
an article as distinguished from its quality, and which others have 
not the equal right to employ for the same purpose. In its 
strictest sense, it is applicable only to a vendible article of mer- 
chandise to which it is affixed." 

In G. W. Cole Co. vs. American Cement & Oil Co., 130 F, 
703, the Court of Appeals for the Seventh Circuit said: 

"A trade-mark is an arbitrary distinctive name, symbol or 
device, to indicate or authenticate the origin of the products to 
which it is attached." 

In Galena Signal Oil Co. vs. W. P. Fuller & Co., 142 F. 1002 
the Court said: 

"The symbol or device which one is at liberty to affix to a prod- 
uct of his own manufacture as a trade-mark must be one not 
previously appropriated, and which will distinguish the article from 
one of the same general aature manufactured or sold by others." 



II. 

Trade-Mark Statutes 

(Sees. 16, 17, 19, 20, 21, 23, 27, 28.) 
Effect of Registration: 

Section 16. That the registration of a trade-mark under the 
provisions of this act shall be prima facie evidence of ownership. 
Any person who shall, without the consent of the owner thereof, 
reproduce, counterfeit, copy, or colorably imitate any such trade- 
mark and affix the same to merchandise of substantially the same 
descriptive properties as those set forth in the registration, or to 
labels, signs, prints, packages, wrappers, or receptacles intended 
to be used upon or in connection with the sale of merchandise 
of substantially the same descriptive properties as those set forth 
in such registration, and shall use, or shall_ have used, such repro- 
duction, counterfeit, copy, or colorable imitation in commerce 
among the several States, or with a foreign nation, or with the 
Indian tribes, shall be liable to an action for_damages therefor at 
the suit of the owner thereof; and whenever in any such action a 

31 



32 Trade-Marks, Trade-Names. 

verdict is rendered for the plaintiff, the court may enter judgment 
therein for any sum above the amount found by the verdict as the 
actual damages, according to the circumstances of the case, not 
exceeding three times the amount of such verdict, together with 
the costs. 

Jurisdiction of Courts: 

Section 17. That the circuit and territorial courts of the United 
States and the supreme court of the District of Columbia shall 
have original jurisdiction, and the circuit courts of appeal of the 
United States and the court of appeals of the District of Columbia 
shall have appellate jurisdiction of all suits at law or in equity 
respecting trade-marks registered in accordance with the provisions 
of this act, arising under the present act, without regard to the 
amount in controversy. 

Injunctions, Damages and Accountings: 

Section 19. That the several courts vested with jurisdiction 
of cases arising under the present act shall have power to grant 
injunctions, according to the course and principles of equity, to 
prevent the violation of any right of the owner of a trade-mark 
registered under this act, on such terms as the court may deem 
reasonable; and upon a decree being rendered in any such case for 
wrongful use of a trade-mark the complainant shall be entitled to 
recover, in addition to the profits to be accounted for by the 
defendant, the damages the complainant has sustained thereby, 
and the court shall assess the same or cause the same to be assessed 
under its direction. The court shall have the same power to 
increase such damages, in its discretion, as is given by section 
sixteen of this act for increasing damages found by verdict in 
actions of law; and in assessing profits the plaintiff shall be required 
to prove defendant's sales only; defendant must prove all elements 
of cost which are claimed. 

Section 20. That in any case involving the right to a trade- 
mark registered in accordance with the provisions of this act, in 
which the verdict has been found for the plaintiff, or an injunction 
issued, the court may order that all labels, signs, prints, packages, 
wrappers, or receptacles in the possession of the defendant, bearing 
the trade-mark of the plaintiff or complainant, or any reproduction, 
counterfeit, copy, or colorable imitation thereof, shall be delivered 
up and destroyed. Any injunction that may be granted upon 
hearing, after notice to the defendant, to prevent the violation 
of any right of the owner of a trade-mark registered in accordance 
with the provisions of this act, by any circuit court of the United 
States, or by a judge thereof, may be served on the parties against 
whom such injunction may be granted anywhere in the United 
States where they may be found, and shall be operative, and may 
be enforced by proceedings to punish for contempt, or otherwise, 
by the court by which such injunction was granted, or by any 
other circuit court, or judge thereof, in the United States, or by the 
supreme court of the District of Columbia, or a judge thereof. 
The said courts, or judges thereof, shall have jurisdiction to enforce 

j Gaid injunction, as herein provided, as fully as if the injunction had 

been granted by the circuit court in which it is sought to be en- 

'■ forced. The clerk of the court or judge granting the injunction 

shall, when required to do so by the court before which application 
to enforce said injunction is made, transfer without delay to said 
court a certified copy of all the papers on which the said injunction 
was granted that are on file in his office. 

Fraud and Misrepresentation: 

Section 21. That no action or suit shall be maintained under 
the provisions of this act in any case when the trade-mark is used 
in unlawful business, or upon any article injurious in itself, or which 
mark has been used with the design of deceiving the public in the 
purchase of merchandise, or has been abandoned, or upon any 
certificate of registration fraudulently obtained. 



« 



Unfair Business Competition. 33 

Common Law Rights: 

Section 23. That nothing in this act shall prevent, lessen, 
impeach, or avoid any remedy at law or in equity which any 
party aggrieved by any wrongful use of any trade-mark might 
have had if the provisions of this act had not been passed. 

Custom House Registration; 

Section 27. That no article of imported merchandise which 
shall copy or simulate the name of any domestic manufacture, or 
manufacturer or trader, or of any manufacturer or trader located 
in any foreign country which, by treaty, convention, or law affords 
similar privileges to citizens of the United States, or which shall 
copy or simulate a trade-mark registered in accordance with the 
provisions of this act, or shall bear a name or mark calculated to 
induce the public to believe that the article is manufactured in the 
United States, or that it is manufacturedin any foreign country or 
locality other than the country or locality in which it is in fact 
manufactured, shall be admitted to entry at any custom-house of 
the United States; and, in order to aid the officers of the customs 
in enforcing this prohibition, any domestic manufacturer or trader, 
and any foreign manufacturer or trader, who is entitled under the 
provisions of a treaty, convention, declaration, or agreement be- 
tween the United States and any foreign country to the advantages 
afforded by law to citizens of the United States in respect to trade- 
marks and commercial names, may require his name and residence, 
and the name of the locality in which his goods are manufactured, 
and a copy of the certificate of registration of his trade-mark, issued 
in accordance with the provisions of this act, to be recorded in 
books which shall be kept for this purpose in the Department 
of the Treasury, under such regulations as the Secretary of the 
Treasury shall prescribe, and may furnish to the Department 
facsimiles of his name, the name of the locality in which his goods 
are manufactured, or of his registered trade-mark; and there- 
upon the Secretary of the Treasury shall cause one or more copies of 
the same to be transmitted to each collector or other proper officer 
of customs. 

Notice: 

Section 28. That it shall be the duty of the registrant to give 
notice to the public that a trade-mark is registered, either by 
affixing thereon the words "Registered in U. S. Patent Office," 
or abbreviated thus, "Reg. U. S. Pat. Off.," or when, from the 
character or size of the trade-mark, or from its manner of attach- 
ment to the article to which it is appropriated, this can not be 
done, then by affixing a label containing a like notice to the pack- 
age or receptacle wherein the article or articles are inclosed; and 
in any suit for infringement by a party failing so to give notice of 
registration no damages shall be recovered, except on proof that 
the defendant was duly notified of infringement, and continued 
the same after such notice. 

Red Cross Insignia: 

Act to incorporate the American National Red Cross, 
APPROVED January 5, 1905 (as amended June 23, 1910). 
Section 4. That from and after the passage of this act it shall 
be unlawful for any person within the jurisdiction of the United 
States to falsely or fraudulently hold himself out as or represent 
or pretend himself to be a member of or an agent for the American 
National Red Cross for the purpose of soliciting, collecting, or 
receiving money or material; or for any person to wear or display 
the sign of the Red Cross or any insignia colored in imitation 
thereof for the fraudulent purpose of inducing the belief that he 
is a member of or an agent for the American National Red Cross. 
It shall be unlawful for any person, corporation, or association 
other than the American National Red Cross and its duly author- 
ized employees and agents and the Army and Navy sanitary and 



34 Trade-Marks, Trade-Names. 



hospital authorities of the United States, for the purpose of trade 
or as an advertisement, to induce the sale of any article whatsoever 
or for any business or charitable purpose to use within the territory 
of the United States of America and its exterior possessions the 
emblem of the Greek Red Cross on a white ground, or any sign or 
insignia made or colored in imitation thereof, or of the words "Red 
Cross" or "Geneva Cross" or any combination of these words: 
Provided, however. That no person, corporation, or association that 
actually used or whose assignor actually used the said emblem, 
sign, insignia, or words for any lawful purpose prior to January 
fifth, nineteen hundred and five, shall be deemed forbidden by this 
act to continue the use thereof for the same purpose and for the 
same class of goods. If any person violates the provision of this 
section he shall be deemed guilty of a misdemeanor, and upon con- 
viction in any Federal court shall be liable to a fine of not less 
than one or more than five hundred dollars, or imprisonment for 
a term not exceeding one year, or both, for each and every offense. 



III. 

Statute vs. Common Law 

It should be clearly understood that the right to own a trade- 
mark or trade-name has not been created by statute, for the use 
of trade-marks and their protection antedates any legislation 
affecting this subject of jurisprudence. The Supreme Court of 
the United States, speaking of the relation of trade-marks to 
legislation, in United States vs, Steffens, et al, lOO U. S. 82-100, 
says : 

"The right to adopt and use a symbol or device to distinguish 
the goods or property made or sold by the person whose mark it is, 
to the exclusion of use by all other persons, has long been recognized 
by the common law and the chancery courts of England and this 
country. ... It is a property right for the violation of which 
damages may be recovered in an action at law, and the continued 
violation of it will be enjoined by a court of equity with compen- 
sation for past infringement. This exclusive right was not created 
by the act of Congress, and does not now depend upon it for its 
enforcement. The whole system of trade-mark property and the 
civil remedies for its protection existed long and anterior to that 
Act (viz., Act of July 8, 1870), and have remained in full force since 
its passage." 

See alsa Section 23 Trade-Mark Laws of 1905, at p. 3. 



IV. 
Effect of Trade-Mark Act 

The effect of registering a trade-mark in accordance with the 
Trade-Mark Laws of the United States, enacted February 20, 
1905, is as follows: 

I. It creates a permanent record of the date of 
adoption and use of a mark, which in any suit is prima 
facie evidence of ownership. Therefore, should litiga- 
tion arise between the owner of a registered mark, 
and one who is the owner of a non-registered mark, 



Unfair Business Competition. 35 

the burden of proof is on the latter to establish 
priority of adoption and use. This is often very- 
difficult to do, especially where a trade-mark has been 
in long use, as such proof must necessarily rest on 
the production of old labels, cartons, packages of the 
goods with the trade-mark attached, order books, 
and the testimony of witnesses. 

2. It gives jurisdiction to the Federal Court ir- 
respective of the amount in controversy or the place of 
residence of the parties. This is of decided advantage 
owing to the fact that an injunction secured in one 
Federal Court will be enforced in all such courts 
throughout the United States, and further, the owner 
of a registered mark is afforded the privilege of re- 
cording his trade-mark with the various United 
States Custom Houses to prevent the importation of 
goods bearing an infringing mark. An action where 
neither litigant is the owner of a registered trade- 
mark must be brought in a state court, unless there is 
a diversity of citizenship between the contesting 
parties and an amount of more than $3,000 involved. 

3. It allows treaty stipulations entered into 
between the United States and foreign countries for the 
benefit of the owners of trade-marks to be carried out. 



V. 
Trade-Marks and Trade-Names Distinguished 

A trade-name can be distinguished from a trade-mark in 
that the former is either a word or combination of words serving 
to distinguish a certain manufacturer or merchant and his 
specific merchandise, which word or words, although not capable 
of exclusive appropriation nor registrable in the Patent Office as 
a technical trade-mark will nevertheless be protected within 
certain limits by the Courts from general use by competitors 
through the doctrine of unfair competition; while on the other 
hand, a technical trade-mark is capable of exclusive appropria- 
tion, can be registered in the United States Patent Office, and an 
infringer may be proceeded against under the provisions of the 
Federal Trade- Mark Statutes. 

On this subject the Court of Appeals stated in 

Wolf Bros. & Co. vs. Hamilton-Brown Shoe Co., 165 

F. 413, 91 C.C.A. 363: 

''While it is true that a geographical name may not be ex- 
clusively appropriated as a trade-mark, yet a party having 
adopted a geographical name as a designation of his goods, may be 
protected as against unfair trade. ... In this case, while the 
complainant is not entitled to relief upon the grounds that the 
words 'The American Girl,' or the numerals applied to its several 
Styles of shoes, are valid trade marks, yet it is entitled to protection 



36 Trade-Marks, Trade-Names. 

from their use by the defendant in a manner and under circum- 
stances constituting unfair trade, the essence of the rule being 
that one person shall not, in the sale of his goods, so act as to lead 
the public to believe that they are the goods of another." 

See also Northwestern Knitting Co. vs. Garon, 128 N. W. 288, 
and Wolf Bros. & Co. vs. Hamilton-Brown Shoe Co., 192 F. 930. 

Such words, therefore, as " Wanamaker," "Hygeia," "The 
American Girl," "Flare Front," "Waltham," etc., are trade- 
names which will be protected by Courts of Equity, through the 
application of the law of unfair competition, while "Kodak," 
"Coca Cola," "Jell-o," etc., are trade-marks capable of Federal 
registration, and infringers may be proceeded against directly 
under the provisions of the Trade-Mark Statutes. 



VI. 
Proper Names as Trade-Marks 

Any one has the right to honestly use his own name in con- 
nection with his business, even though this use should interfere 
or injure the business of another, provided, however, that he 
uses every reasonable means he can to distinguish his own 
business, and the merchandise which he places on the market 
from those of his competitor. 

In Royal Baking Powder Co. vs. Royal, 122 F. 337, the Court 
of Appeals said: 

"In view of the very plain purpose of the defendant to attack 
the business of the Royal Baking Powder Co. in an unfair way, 
and of the positive evidence of purchasers misled by the conspicu- 
ous way in which the name ' Royal ' is displayed on the front label 
of defendant's cans, and of the evidence that it is not customary 
in the trade to display the maker's name on the front of the label, 
a majority of the Court think it right to extend the injunction so 
as to restrain the defendant from displaying his name on the front 
label of his cans. That the maker should have his name and 
address somewhere on the goods is right. We all agree with Judge 
Evans in refusing to restrain the defendant from in any way using 
his own name, but a majority think that the duty of so using it as 
to carefully distinguish the business carried on by him and the 
goods made by him, from the business done by the complainant 
and the goodsmade by them, demands that he shall present his 
his own name in the least conspicuous manner possible consistent 
with the right to place his name and address upon the goods made 
by him." 

In Stix, Baer & Fuller Dry Goods Co. vs. American Piano Co., 
211 F. 271, the Court of Appeals in the Eighth Circuit said: 

"It is now settled beyond controversy that a family surname is 
incapable of exclusive appropriation in trade. The right of every 
man to use his own name in his business was declared in the law 
before the modern doctrine of unfair trade competition had arisen. 
It is part of the law of trade-mark. The subject may, therefore, be 
properly approached from that side. If, however, the name has 
previously become well known in trade, the second comer uses it 
subject to three important restrictions: (i) He may not affirma- 
tively do anything to cause the public to believe that his article is 
made by the first manufacturer. (2) He must exercise reason- 
able care to prevent the public from so believing. (3) He must 



1 



Unfair Business Competition. 37 

exercise reasonable care to prevent the public from believing that 
he is the successor in business of the first manufacturer. This duty 
to warn, however, must not be pressed so far as to make it im- 
practicable for the second comer to use his name in trade. Other- 
wise we destroy under the law of unfair trade competition the very 
right which we have saved under the law of trade-mark." 

See also Von Faber vs. Faber, 124 F. 603 and 139 F, 257; 
Walter Baker & Co. vs. Sanders, 80 F. 889; Ball vs. Best, 135 F. 
434; L. E. Waterman Co. vs.. Modern Pen Co., 197 F. 534; Thad- 
deus Davids Co. vs. Davids, 192 F. 915; Walter Baker & Co. vs. 
Gray, 192 F. 921; Williams Soap Co. vs. J. B. Williams Soap Co., 
193 F. 384; Wright Restaurant Co. vs. Seattle Restaurant Co., 
67 Wash. 690; International Silver Co. vs. Rogers, 67 A. lOS- Wm. 
A. Rogers, Ltd. vs. International Silver Co., 34 App. D. C. 410; 
National Distilling Co. vs. Century Liquor & Cigar Co., 183 F. 
206; Kaufmann vs. Kaufmann, 123 N. Y. S. 699. 



VII. 
Names of Patented Articles 

Upon the expiration of a patent on an article of merchandise, 
any trade-mark or trade-name that has been associated with the 
article in the sale thereof during the life of the patent, becomes 
public property. This doctrine is clearly expressed in Singer Mfg. 
Co. vs. June Mfg. Co., 163 U.S. 169, where the Court, speaking 
by Mr. Justice White, said: 

"The result, then, of the American, the English and the French 
doctrine universally upheld is this, that where, during the life of a 
monopoly created by a patent, a name, whether it be arbitrary or 
be that of the inventor, has become by his consent, either expressed 
or tacit, the identifying and generic name of the thing patented, 
this name passes to the public with the cessation of the monopoly 
which the patent created. Where another avails himself of this 
public dedication to make the machine and use the generic desig- 
nation, he can do so in all forms with the fullest liberty, by affixing 
such name to the machines, by referring to it in advertisements, 
and by other means, subject, however, to the condition that the 
name must be so used as not to deprive others of their rights or to 
deceive the public, and, therefore, that the name must be accom- 
panied with such indications that the thing manufactured is the 
work of the one making it, as will unmistakably inform the public 
of that fact." 

This doctrine was upheld and Mr. Justice White quoted in 
Sternberg Mfg. Co. vs. Miller, Du Brul & Peters Mfg. Co., 161 

F. 318. 

In National Lock Washer Co. vs. Hobbs Mfg. Co., 210 F. 516. 
the Court said: 

"The defendant contends that this case is governed by the 
decision in Singer Manufacturing Co. vs. June Manufacturing Co., 
163 U. S. 169, 16 Sup. Ct._ioo2, 41 L. Ed. 118; that under the rule 
of that case, upon the expiration of the Harvey patent in 1903, the 
word 'National,' as applied to lock washers constructed under 
that patent, became public property, and that it had the right 
thereafter to make lock washers covered by the patent and to sell 
them under the designation of the National Pattern, provided it 
clearly indicated, as it did, that the article it dealt in was of its own 
manufacture; that neither the patentee nor his successor in title, 
the complainant, could acquire a monopoly in the word "National" 



38 Trade-Marks, Trade-Names. 



on the theory that it had become a trade- mark denoting origin; 
that, whether it denoted origin or, by reason of its use during the 
existence of the patent, had become descriptive of the kind of 
washer manufactured thereunder, neither the patentee nor his 
successor could acquire a monopoly in the word by having it 
registered under the act of 1905 as a technical trade-mark, or as a 
descriptive word under the lo-year clause; and that its use under 
the patent, being a monopoly, cannot be availed of as proof for the 
purpose of extending the monopoly for an additional 20 years by 
registration under the lo-year clause of the act of February 20, 
190S. 

"This contention meets my approval. The underlying 
principle in the Singer- June Case is that it is against the policy of 
the law to extend the monopoly of the patentee or his successor in 
title in the patented article after the expiration of the patent 
through a name, which during the existence of the patent has be- 
come descriptive of the article. 

"Then again, in construing the Trade-Mark Act of 1905, it is a 
reasonable inference that Congress did not intend that the pro- 
visions of that act should operate to continue the monopoly 
through registration under it, or that the use of a word in con- 
nection with a patented article and during the life of the patent 
should be availed of to make up the_ ten years of actual and ex- 
clusive use necessary to authorize registration." 

See also Centaur Co. vs. Heinsfurter et al, 84 P. 955; Brill vs. 
Singer Mfg. Co., 41 Ohio State; G. & C. Merriam Co. vs. Saalfield, 198 
F. 369; Yale&Towne Mfg. Co. i;5. Restein et al, 196 F. 176; Yale & 
Towne Mfg. Co. vs. Worcester Mfg. Co., 195 F. 528; Marshall 
Engine Co. vs. New Marshall Engine Co., 89 U. E. 548; Avenarius 
vs. Korenely, 121 N. W. 336; Rice-Stix Dry Goods Co. vs. J. A. 
Scriven Co., 165 F. 639; Frank W. Witcher Co. vs. Sneierson, 205 F. 
767; Hughes et al vs. Alfred H. Smith Co., 205 F. 303, 209 F. 37; 
Yale & Towne Mfg. Co. vs. Worcester Mfg. Co., 205 F. 952; 
Jenkins Bros. vs. Kelly & Jones Co., 212 F. 328; Nathan Mfg. Co. 
vs. H. A. Rogers Co., 114 I^I. Y. S. 1033. 



VIII. 
Priority of Adoption and Use 

In general, it can be stated that as between parties claiming 
the exclusive right to the same trade-mark, or marks substantially- 
similar, the party proving priority of adoption and use is entitled 
to exclusive ownership, provided that the trade-mark in con- 
troversy had never been abandoned by the first user, or that the 
defense of laches or misrepresentation is not proven by the 
later user. 

In Metcalf vs. Hanover Star Milling Co., 204 F. 211, the 
Court of Appeals of the Fifth Circuit said: 

"To invoke the jurisdiction of a court of equity to prevent 
infringement and unfair competition by the use of a similar trade- 
mark by another, it is incumbent upon the complainant to show 
that he has the property right in the mark or thing which 
indicates the ownership or origin of the article, and that its use 
has been fraudulently invaded by another. Columbia Mill Co. vs. 
Alcorn, 150 U. S. 460, Epperson & Co. vs. Blumenthal, 149 Ala. 
125, The property right in a trade-mark is acquired chiefly, as 
we shall see, by prior adoption and exclusive use of the mark or 
symbol relied upon to distinguish the proprietor's ownership. 
The exclusiveright to the use of a trade-mark rests, not so much 
on priority of invention, but upon such use as to indicate the origin 



Unfair Business Competition. 39 

of plaintiff's goods, and must be early and separate enough for 
that purpose. Where long use is clearly shown, the mere fact that 
the owner has permitted the limited use by another, if such use 
was not calculated to mislead, will not defeat the owner's right to 
protection. . . . 

"It appears to be well settled by authority that the first use of a 
trade-mark gives to the prior user the exclusive right to its use in 
trade to a commodity to which it is applied." 

In Layton Pure Food Co. vs. Church & D wight Co., 182 F. 
24, the Court said: 

"The right to the exclusive use of a trade-mark is not gained 
or lost by claim or by registration. It is acquired by adoption and 
by a use so persistent and continuous that it comes to distinguish 
in the eyes and thought of purchasers and of those who seek to 
purchase the goods of its owner from those of other makers and 
sellers. When it has been thus acquired it may be lost by a failure 
to continue its use, by conveyance, or by renunciation. It is not 
dependent upon the national statute which authorizes the regis- 
tration of trade-marks. It is a right secured under and protected 
by the common law." 

In Dietz et al, vs. Horton Mfg. Co., 170 F. 865 it was decided: 
That neither the complainant nor the defendant was entitled to 
the exclusive use of the word "Globe" as a trade-mark for wash- 
ing machines, it appearing that this mark had been used by an- 
other manufacturer and his successors in business, whose ma- 
chines had been sold throughout the country, for some years 
before the adoption of the mark by either of the parties to this 
action, and that such use continued for some years afterward. 

In New York Herald Co. vs. Star Co., 146 F. 204, it was held 
that the plaintiff was entitled to protection in the trade-mark 
"Buster Brown" as the title of a comic section of a newspaper, 
it having been shown that it was the first to use the title and that 
the name was used exclusively by the comxplainant and its 
licensees for such a length of time as to give it a proprietory 
right therein. 

In Thomas G. Carroll & Son Co. vs. Mcllvaine & Baldwin, 
Inc., 171 F. 125, the Court said: 

"The complainant gives undue weight to the series of regis- 
trations above set forth. Property right in a trade-mark exists in 
common law and is independent of the statutes regulating registra- 
tion. Under the present Trade-Mark Act a certificate of regis- 
tration is prima facie evidence of ownership; but this evidence may 
be contradicted in court and the apparent right of the registering 
party shown not to exist. Registration cannot confer a title to a 
trade-mark if some other individual has acquired a prior right by 
adoption and use; nor can it vest a title in the registrant as against 
another's common law title." 

See also W. A. Gaines & Co. vs. Rock Spring Distilling Com- 
pany, 179 P. 544; Ohio Baking Powder Company vs. National 
Biscuit Company, 127 F. 116; Dodge Mfg. Co. vs. Sewall & Day 
Cordage Co., 142 F. 288; and E. T. Fraim Lock Co. vs. Shimer 43 
Pa. Super. Ct. 221; Spiegel z;5. Zuckerman, 175 F. 978; R. Guasta- 
vino Co. vs. Comerma, 180 F. 920; Albers Bros. Milling Co. vs. 
Acme Mills Co., 171 F. 989; Duluth Superior Milling Co. vs. Kofer, 
37 App. D. C. lis; Sears & Nichols Co. vs. Brakeley, 38 App. D.C. 
530; and H. Becker & Co. i'5. C. A. Gambrill Mfg. Co., 38 App. D.C. 
535; Deitsch et al vs. Gibson, 198 F. 410; Richter vs. Reynolds, 
59 F. 577; Case Bros. vs. E. W. Murphey & Co., 31 App. D.C. 



40 Trade-Marks, Trade-Names. 



24s; J. R. Watkins Medical Co. vs. Sands et al, 86 N. W. 340; 
Eagle "White Lead Co. vs. Pflugh et al, 180 F. 579; Avenarius vs. 
Kornely, 121 N. W. 333; 111. Match Co. vs. Broomall, 34 App. D. C. 
427; Crescent Oil Co. vs. W. C. Robinson & Sons Co., 34 App. D.C. 
440; Galena-Signal Oil Co. vs. W. P. Fuller & Co., 142 F. 1002. 



IX. 
The Ten- Year Clause 

The Ten- Year Clause of the Trade-Mark Laws of the United 
States is that provision of the Act of February 20th, 1905, which 
permits the registration of ''any mark used by the appHcant or 
his predecessors, or by those from whom title to the mark is derived 
in commerce with foreign nations, or among the several states, 
or with Indian tribes, which was in actual and exclusive use as a 
trade-mark of the applicant, or his predecessors from whom he 
derived title, for ten years next preceding February 20th, 1905." 

In Thaddeus Davids Co. vs. Cortland I. Davids, et al, de- 
cided by the United States Supreme Court, April 27, 19 14, it 
was held that: 

1. The ten-year clause of the trade-mark act of 
1905, has manifest reference to marks which are not 
technical trade-marks, and is intended to bring 
within the statute marks that have acquired a 
secondary significance by reason of ten years' actual 
and exclusive use. 

2. This clause modifies the preceding pro- 
hibition of the statute against the registration of 
proper names, descriptive and geographical terms, 
and makes such marks eligible to registration when the 
conditions as to use are fulfilled. 

3. A. proper name registered under the ten-year 
clause becomes a trade-mark and is entitled to pro- 
tection commensurate with that accorded to any 
other mark registered under the statute. 

4. The protection extended to a mark registered 
under the ten-year clause of the act is not confined to 
the prevention of the use thereof in the precise manner 
employed by the registrant, but extends to any case 
of colorable imitation. 

5. A proper name, though registered as a trade- 
mark under the ten-year clause of the trade-mark 
act, can not be exclusively appropriated, but is to be 
protected against any use thereof by another in a 
manner calculated to deceive. 

In Coca-Cola Co. vs. Nashville Syrup Co., 200 Fed. 157, it 
was held, that the Act of Congress of February 20, 1905, pro- 
viding for the registration of trade-marks used by an applicant 
and his predecessors in interstate commerce for ten years prior 



Unfair Business Competition. 41 

to the passage of the Act, necessarily implied that a trade- mark 
when so registered should constitute a mark as defined by- 
Section 29, and therefore the complainant having used the 
word or words "Coca-Cola" as a trade-mark in interstate com- 
merce for more than ten years prior to the passage of such Act 
and duly caused the same to be registered, such mark was not 
limited to the script in which the words "Coca-Cola" were 
written in connection with complainant's product either in the 
hyphenated or unhyphenated, but extended to the use of the 
words themselves in the sale of a similar article, and that the 
complainant having registered such a mark had obtained the 
exclusive right to the use of the same as a statutory trade-mark. 
In American Lead Pencil Co. vs. L. Gottlieb & Sons, 181 F. 
178, the Court held that w^here the complainant had used the 
trade-mark "Beats- All," associated with lead pencils since 1888, 
and had used the same in in>terstate commerce prior to April 
I, 1895, and on April 17, 1906, had obtained registration of the 
trade-mark in the United States Patent Office, such registration 
imparted to the words, which originally were only descriptive 
and not subject of a valid trade-mark, a secondary meaning 
indicating goods exclusively manufactured by the complainant, 
which made the words available as a proper and technical 
trade-mark. 

Cohn Belt&Co., 27 App. D.C. 173; Commonwealth 1/5. Sherman 
Mfg. Co., 75 N- E. 71; Worcester Brewing Corp. vs. Rueter & Co.. 
30 App. D.C. 428; Thaddeus Davids Co. vs. David's at al, i7cS F. 
801, 192 F. 915; Coca-Cola Co. vs. Deacon Brown Bottling Co. et 
al, 200 F. 105; N._Y. Mackintosh Co. vs. Flam, 198 F. 571; Warner 
Bros. Co. vs. David Wiener, Apr. 28th, 1914; Rossnianz;5. Garnier, 
211 F. 401. 



X. 
Loss of Trade-Mark Rights 

Trade-mark rights may be lost through abandonment, 
laches, acquiescence, misrepresentation or fraud, and any one 
of these causes may be interposed as a defense to an action for 
infringement. 

Abandonment : 

The question of intent on the part of the owner of a trade- 
mark determines whether the trade-mark has been abandoned or 
not, although sometimes an intent to abandon will be inferred. 
— In Saclehner vs. Eisner & Mendelsohn Co., 179 U. S. 19-31- 
1900, the Court, speaking by Mr. Justice Brown, said: 

"To establish the defense of abandonment, it is necessary to 
show npt only acts indicating a practical abandonment, but an 
actual intent to abandon. Acts which, unexplained, would be 
sufficient to establish an abandonment, may be answered by show- 
ing that there never was an intention to give up and relinquish the 
right claimed." 



42 Trade-Marks, Trade-Names. 

In Metcalf vs. Hanover Star Milling Co., 204 F. 211, the 
Circuit Court of Appeals, Fifth Circuit, said: 

"Abandonment, as we have seen, must be supported by a clear 
intention of the owner to discontinue the use of the trade-mark. 
The evidence does not show any purpose on the part of defendant 
to abandon the use of the Tea Rose in the territory generally 
occupied in its trade." 

In Actiengesellschaft Vereinigte Ultramarin-Fabriken vs. 
Amberg, 109 F. 151, the Court held that the fact that others than 
the complainant had used a certain style of dressing for their 
goods, which the latter originated and used continuously for 
many years was not sufficient to establish an abandonment of its 
right to the exclusive use thereof unless it appeared that by its 
acquiescence in such use there was indicated not only a practical 
abandonment, but an actual intent to abandon. 

In Burt et al, vs. Tucker, 59 N. E. 11 11, the defendant had 
used the word "Knickerbocker" for two years to indicate shoes 
manufactured by him, but discontinued to use the trade-mark 
for four years on going out of business. On the reestablishment 
of his business in another state, he named his concern the 
"Knickerbocker Shoe Company." Plaintiff, during the time of 
defendant's non-use of the name, used the same, and brought 
suit to restrain defendant's use of the trade-mark, in which 
proceeding the defendant testified that he had not intended to 
abandon the use of the mark. Held, sufficient to support a 
finding that defendant had not abandoned the trade-mark. 

In Edward & John Burke, Ltd., vs. Bishop, 175 F. 167, the 
Court held that in order to establish abandonment of a merchant's 
right to protect his labels and dress of goods in association 
with which his merchandise was sold, an actual intent to abandon 
had to be shown, though it might be inferred from his acts or 
laches necessarily pointing to actual abandonment. 

In McGraw Tire & Rubber Co. vs. Griffith et al, 198 F. 566, 
the Court said: 

"If defendant 'could be supposed to have any prior rights in 
"the word Imperial" I think they abandoned it' by a contract with 
complainant under which they bought 7.500 tires, all of which 
were marked by complainant with this mark to which defendant 
made no protest except a suggestion that complainant should either 
sell all of its tires to defendant or else use another brand for a trade- 
mark which was never followed up." 

See also Michigan Condensed Milk Co. vs. Kenneweg Co., 30 
App. Cases (D.C.) 491; Deitsch vs. George R. Gibson Co., 155 F. 
383; Eisemani'5. Schiffer, 157 F. 473; Raymond i'5. Royal Baking- 
Powder Co., 85 F. 231; In re John Broadland, 37 App. D.C. 602; 
and Star Brewery Co., vs. Val. Blatz Brewing Co., 36 App. D.C. 
534; Blackwell & Co. vs. Dihrell & Co., 3 Hughes, 151; Celluloid 
Mfg. Co. vs. Cellonite Mfg. Co., 32 F. 94; Nolan Bros. Shoe Co. vs. 
Nolan, 131 Cal. 271; Dr. Dadirrian & Sons Co. vs. Hanenstein, 74 
N.Y.S. 709; Baglin vs. Cusenier Co., 156 F. 1015; Anenarius vs. 
Kornely, 121 N.W. 336; Nelson t^5. J. H. Winchell Co., 89 N.E. 180; 
Edward & John Burke, Ltd. vs. Bishop, 175 F. 167; Lavton Pure 
Food Co. vs. Church & Dwight Co., 182 F. 24; Water Proofing Co. 
vs. Hydrolithia Cement Co., 138 N.Y.S. 265. 



Unfair Business Competition. 43 

Laches : 

Laches differ from abandonment in that the element of 
intention is absent, and may be divided into two classes : ( i ) mere 
delay in bringing suit; (2) where there has been such acquiescence 
as to make the relief asked for inequitable to others having 
intervening rights. 

(i) In Cahn vs. Gottschalk, 2 N. Y. Supp. 13, it 
was held that five years' delay in bringing suit, after 
notice of the acts constituting unfair competition, 
would bar an action for the recovery of profits, though 
not the granting of an injunction. 

In Dr. Peter H. Fahrne}'- & Sons Co. vs. Ruminer, 
153 F. 735, the complainant notified the defendant to 
desist from the use of a trade-name which was al- 
leged to constitute unfair competition, and the de- 
fendant refused. Complainant then waited four 
years before proceeding legally against the defendant, 
and it was held that whatever effect such delay might 
have upon the right to damage, it did not preclude the 
complainant from injunctive relief. 

In Eagle White Lead Co. vs. Pflugh, 180 F. 579, the 
complainant in 1893 advised defendants of its right to 
a trade-mark which it claimed the defendants were 
infringing, but the complainant did not follow up the 
letter with legal proceedings, until 19 10. 

The ^ourt said: 

"As early as 1893 the defendants were advised by letter (dated 
February i, 1893) of complainant's asserted rights in such trade- 
mark. The failure of complainant to follow up this letter with 
legal proceedings in my judgment disentitles it to an accounting 
for past profits, but it is not sufficient to forfeit its right to pro- 
tection against future infringement. . . . The neglect of com- 
plainant, however, to bring suit for such a length of time must be 
considered as a waiver of damages. By its delay in proceeding 
against defendants they were encouraged in their insistence that 
their trade-mark did not infringe complainant's mark, and to a 
continued use of it in building up their trade. Such delay on 
complainant's part was tantamount to a license, and while revoca- 
ble at will, should be treated in equity as a waiver of the profits 
that have inured before bringing suit." 

See also Consolidated Ice Co. vs. Hygeia Distilled Water Co. 
151 F. 10; Virginia Hot Springs Co. vs. Hegeman & Co., 144 F. 
1023; Edward & John Burke, Limited vs. Bishop, 175 F. 167; and 
Eagle White Lead Co. vs. Pfluger, 180 F. 579; Salvation Army in 
the U. S. vs. American Salvation Army, 114 N.Y.S. 1039; Layton 
Pure Food Co. vs. Church & Dwight Co., 182 F. 24; Nelson vs. 
Winchell & Co., 89 N.E. 180. 

(2) In Dietz vs. Horton Mfg. Co., 170 F. 865, the 
owner of a trade-mark had permitted other manu- 
facturers to use the mark for a number of years with- 
out objection, and it was held that the mark became so 
far common property that the only restriction which 
could be imposed upon its use was that each owner 



44 Trade-Marks, Trade-Names. 

should identify his goods so as to indicate their origin, 
and prevent confusion, deception and unfair com- 
petition. 

See also American Tobacco Co. vs. Polacsek, 170 F. 117; Swain 
vs. Seamans, 76 U.S. 254; French Republic vs. Saratoga Vichy- 
Spring Co., 191 U.S. 427; and Saxlehner vs. Nielsen, 179 U.S. 43. 

Misrepresentation and Fraud : 

Material misrepresentation constituting a fraud on the public 
is obnoxious to a Court of Equity and no relief will be given to 
one guilty of such misrepresentation. 

In Memphis Keeley Institute vs. Leslie E. Keeley 
Co., 155 F. 964, the complainant was a manufacturer 
and proprietor of a secret remedy which it sold and 
used for the treatment and cure of opium, liquor and 
tobacco habits, and which it claimed and represented 
to the public as having as its chief and most valuable 
ingredient "Chloride of Gold " or " Double Chloride of 
Gold." The analysis showed that the complainant 
made false and fraudulent representations as to the 
ingredients of this remedy through its advertisements 
and labels. The Court held that the complainant had 
made fraudulent representations, as the remedy did 
not contain any "Gold" or "Chloride of Gold" and had 
therefore come into court with "unclean hands," no re- 
lief could be afforded and the bill of complaint should 
be dismissed. 

In California Fig Syrup Company vs. Frederick 
Stearns & Co., 73 F. 812, suit was brought by a 
manufacturer of a laxative medicine, to which he 
gave the name "Syrup of Figs" or "Fig Syrup," 
to enjoin another from interfering with his business 
by unfair competition. It was held that complain- 
ant was not entitled to an injunction because it falsely 
represented to the public that the juice of the fig was 
the important medicinal agent in the composition of 
the medicine, when in fact just a suspicion of fig juice 
was put into it, not for the purpose of affecting its 
medicinal character, or even its flavor, but merely to 
give a weak support to the statement that the article 
sold was "Syrup of Figs" while the laxative agent in 
it was Senna. This was so held notwithstanding that 
there was much evidence introduced showing that it 
was a very useful medicine and prescribed by physi- 
cians of high standing. 

Judge Taft said: 

"This is a fraud upon the public. It is true that it may be a 
harmless humbug to palm oflF on the public as Syrup of Figs what is 
Syrup of Senna, but it is nevertheless of such a character that a 
Court of Equity will not encourage it by e.\tending any relief to 



Unfair Business Competition. 45 

the person who seeks to protect a business which is most diflferent 
and- is dependent upon such deceit." 

This case was subsequently approved and followed by the 
Supreme Court in the case of Worden vs. California Fig Syrup 
Company, 187, U.S. 519. 

In Hazlett vs. Pollack Stogie Co. et al, 188 F. 494, affirmed 
195 F. 28, the decedent during his lifetime had built up a large 
and profitable business in stogies, which were sold under his 
name and became known as "Pollack's Stogies"; the word 
"Pollack" alone becoming generally connected with cigars made 
by him. Among other distinctive marks used on his packages 
was a guaranty signed in script over his reproduced signature 
and the factory certificate which also stated that decedent was 
the manufacturer, and on the front of his factory, was decedent's 
name as manufacturer, which name constituted his prinicpal 
trade-mark. Two years after his death, complainant, who 
succeeded him, sent out a letter to the trade printed in script 
and purported to be signed by decedent, calling attention to the 
development of the business and soliciting continued favorable 
consideration; the business being continued by complainant 
as agent of decedent's widow and children. Held, that com- 
plainant's continuance of the use of decedent's trade-mark and 
dress of package, without anything to show that the goods were 
no longer made under the personal supervision of decedent, 
tended to mislead the public, and therefore precluded him from 
maintaining a bill for infringement. 

The Court said: 

"In view of these facts can the present bill be maintained by 
the complainant? Without imputing to complainant any bad 
faith or intent to deceive the public, we are of the opinion that 
under the facts stated the law forbids the maintenance of his bill. 
One of the essentials of an enforcible trade-mark right is that the 
goods it represents shall in no way mislead the public. When a 
manufacturer has by his personality, skill or character built up a 
reputation or good-will for his goods, which goods have a higher 
value than those of other makers, it is quite clear that he cannot 
transfer to others the right to afBx his name to those goods when he 
has ceased to manufacture them, and his transferee mislead the 
public into the belief that the skill and character which gave the 
product distinctive merit still continue to do so. Under such 
circumstances fairness to the public demands that he who succeeds 
to the manufacture of a product of earned personal repute must in 
some appropriate manner apprise the public of the changed 
condition." 

In Bear Lithia Springs Co. vs. Great Bear Springs Co., 71 
Atl. 383, the Court held that complainant's advertisement of its 
water as "bottled at the spring" when in fact it was bottled at 
a city warehouse, and also the declaration in such advertisement 
that such water was a cure for certain diseases named therein, 
contrary to the truth, were such misrepresentations as would 
induce the court to refuse complainant any relief. 

See also Prince Manufacturing Company vs. Princess Metallic 
Paint Company, 135 N.Y. 24; Leach vs. Scarft, 188 F. 446; Hazlett 
vs. Pollack Stogie Co., 188 F. 494; James Van Dyk Co. vs. F. V. 
Reilly Co., 130 N.Y. Supp. 755; and Burrow i'5. Marceau, 124 N.Y, 



46 Trade-Marks, Trade-Names. 



Supp. 8io; Manhattan Medicine Co. vs. Wood, io8 U.S. 218; 
De Nobili vs. Scanda, 198 F. 341; Clotworthy vs. Schepp, 42 F. 62; 
Kohler Mfg. Co. vs. Beeshore, 59 F. 572; Moxie Nerve Food Co. cf 
New England vs. Modox, 152 F. 493; Fray, et al, vs. Lambourne, 
et al, 124 App. Div. (N. Y.) 245; Beecham vs. Jacobs, 159 F. 129; 
Koehler vs. Sanders, 122 N.Y. 65. 



XI. 
Assignability of Trade-Marks 

A trade-mark cannot be assigned or its use licensed, except 
as an incident to a transfer of the business or property in con- 
nection with which it has been used. 

Section 10 of the Trade-Mark Laws of the United States 
reads as follows: 

"That every registered trade-mark, and every mark for the 
registration of which application has been made, together with 
the application for registration of the same, shall be assignable 
in connection with the good-will of the business in which the 
mark is used. Such assignment must be by an instrument in 
writing and duly acknowledged according to the laws of the 
country or State in which the same is executed; any such 
assignment shall be void as against any subsequent purchaser 
for a valuable consideration, without notice, unless it is recorded 
in the Patent Office within three months from date thereof. 
The commissioner shall keep a record of such assignments." 

In Dietz vs. Horton, 170 F. 865, it was held that 
a trade-mark cannot be assigned, except as incident to 
the sale of the business and good-will in connection 
with which it has been used, or as an incident to the 
sale of the premises where the article has been made 
and has acquired a special reputation in connection 
with such place. 

In Bulte vs. Igleheart Bros., 137 F. 492, the Court said: 

"A trade-mark is analogous to the good- will of a business. 
Whoever heard of a good-will being sold to one, while the original 
owner continues the business as before? The good-will is insepa- 
rable from the business itself. So likewise is a trade-mark or a 
trade-name that gives assurance to a purchaser that the article 
upon which is stamped the trade-mark or trade-name is the 
genuine production of the manufacturer to whom the trade-name 
or trade-mark points by association as the maker of the article. 
Therefore it is, that it is a necessary qualification to the assigna- 
bility of a trade-mark that there goes with it the transfer of the 
business and good- will of the owner of the symbol." 

In Morgan et al, vs. Rogers, 19 Fed. 596, it was held that 
as an abstract right, apart from the article manufactured, a 
trade-mark cannot be sold, the reason being that such transfer 
would be productive of fraud upon the public, but in connection 
with the article produced it may be bought and sold like other 
property. 



Unfair Business Competition. 47 

In Independent Baking Powder Co. vs. Boorman, 175 F. 448 
it was held that a manufacturer cannot make a vaUd assignment 
of a trade-mark separate from a transfer of the good-will and 
business in connection with which it was used. 

In Hoffman vs. B. Kuppenheimer & Co., 183 F. 597, it was 
held that a patentee, who has adopted and registered a trade- 
mark, which h© uses to designate the patented article, may 
assign the right to use such trade-mark as an incident to a 
license to make and sell the patented article, without losing his 
rights therein, and, on the termination of the license, he is rein- 
vested with full title to the trade-mark, with the right to pro- 
tection against its continued use by the licensee. 

In Manhattan Medicine Co. vs. Wood, 108 U. S. 223, the 
Court said: 

" The object of the trade-mark being to indicate, by its meaning 
or association, the origin or ownership of the article, it would seem 
that when a right to its use is transferred to others, either by act 
of the original manufacturer or by operation of law, the fact of 
transfer should be stated in connection with its use; otherwise a 
deception would be practiced upon the public and the very fraud 
accomplished, to prevent which courts of equity interfere to protect 
the exclusive right of the original manufacturer. If one affix, to 
goods of his own manufacture, signs or marks which indicate that 
they are the manufacture of others, he is deceiving the public and 
attempting to pass upon them goods as possessing a quality and 
merit which another's skill has given to similar articles, and which 
his own manufacture does not possess in the estimation of pur- 
chasers." 

See also Spiegel vs. Zuckerman, 175 F. 978; MacMahan Phar- 
macal Co. vs. Denver Chemical Manufacturing Company, 113 F. 
468; Independent Baking Powder Company vs. Boorman, 175 F. 
448; Jackson Corset Co. vs. Cohen, 38 App. D.C. 482; Ludwig & Co. 
vs. Cla viola Co.. 144 App. Div. (N.Y.) 388; and Burrow vs. Mar- 
ceau, 124 N.Y. Supp. 810; Kidd vs. Johnson, 100 U.S. 617; Morgan 
etal vs. Rogers, 19 F. 596; The Atlantic Milling Co. vs. Robinson, 
20 F. 217; Richmond Nervins Co. vs. Richmond, 159 U.S. 293; 
Hoflfman vs. B. Kuppenheimer & Co., 183 F. 597. 



XII. 

^ Knowledge or Intent 

/ It is no defense to an action for trade-mark infringement 

j that the defendant had no knowledge of the plaintiff's mark 
\ when he commenced to use the infringing trade-mark, or that he 
\ acted without any intent to infringe upon the rights of the 
Xolaintiff. 

_ In Eagle White Lead Co. vs. Pflugh, 180 F. 579, the Court 
said : 

"The question of infringement is to be determined by the test of 
dominancy. The dissimilarity in size, form and color of the label 
and the place where applied are not conclusive. If the competing 
label conta,ins the trade-mark of another and confusion or deception 
is likely to result, infringement takes place, regardless of the fact 
that the accessories are dissimilar. DupHcation or exact imitation 
is not necessary; nor is it necessary that the infringing label should 



48 Trade-Marks J Trade-Names. 

suggest an effort to imitate. The appropriation of the symbol 
may be without knowledge that another has obtained the right 
to its exclusive use. . . . The method and accompaniments of its 
use may negative the idea of imitation and yet infringement 
exist." 

In Lawrence Mfg. Co. vs. Tennessee Mfg. Co., 138 U. S. 537, 
the Court held that in the case of a technical trade-mark, where 
infringement is clearly shown, fraudulent intent will be inferred. 

In Reading Stove Works, Orr, Painter & Co. vs. S. M. Howes 
Co., 87 N. E. 751, it was held that to restrain a manufacturer 
from making and selling goods under the trade-mark of another, 
it was not necessary to prove that customers have actually been 
deceived and have bought such goods under the belief that they 
were made by the owner of the trade-mark; but it was sufficient 
if the resemblance is likely, upon comparison, to cause one to be 
mistaken for the other, and it is not material that dealers or 
customers were indifferent whether the goods were those made 
by the owner of the trade-mark or those made by the infringer, 
as it was the attempt to dispose of goods by misrepresentation 
that constituted the wrong. 

See also Foster Mfg. Co. vs. Tower Co., 97 N. E. 749; Stephano 
vs. Satimatopoulas, 199 F. 451; Lawrence Mfg. Co. vs. Tennessee 
Mfg. Co., 138 U.S. 537; McLean vs. Fleming, 96 U.S. 24s; Wels- 
bach Light Co. vs. Adam et al, 107 F. 463, N. K. Fairbank Co. vs. 
Luckel, King & Cake Soap Co., 102 F. 327; W. A. Gaines Co. vs. 
Turner-Looker Co., 204 F. 553; De Voe Snuff Co. vs. Wolff, 206 F. 
420. 



XIII. 

Infringement of Marks, Symbols, Devices 
and Names 

The law relative to the infringement of marks, devices, 
symbols and names is perhaps best shown by a brief summary 
of some of the cases on this subject. 

In Victor Talking Machine Co. vs. Bradley, 171 F. 951, the 
complainant used a red seal or label in the center of its talking 
machine discs or records bearing its trade-mark. The court held 
that the use by the defendant of a red band around the labels 
of its records did not constitute an infringement of the complain- 
ant's trade-mark, especially where the records of the defendant 
in no other respects resembled those of the complainant. 

In Walter Baker & Co., Ltd. vs. Delaphenha et al, 160 F. 746, 
the complainants registered as trade-marks the word "Auto" 
and a picture of a motor car, to be used on packages of chocolate. 
The court held that these marks were infringed by the defendants 
through the latter's use of both the word "Auto" and the pic- 
ture of an automobile on packages of imported chocolate although 
these packages were somewhat different in style and coloring 



Unfair Business Competition. 49 

from those of the complainant, and the defendant had registered 
the design in Switzerland prior to its use in this country by the 
complainant, the defendant not having used the design in the 
United States until after its use by the complainant. 

In Holeproof Hosiery Co. vs. Wallach Bros., 190 F. 606, it 
was held that the word "Holeproof" as a trade-mark for hosiers- 
was not invalid as descriptive where it had been used and ad- 
vertised for such a length of time as to have acquired a secondary 
meaning as designating the product of a particular maker. The 
complainant had made and sold hosiery under the trade-mark 
"Holeproof" and w^hen sold by the box gave a guarantee of 
replacement if holes appeared in the hosiery within six months, 
which fact was novel and was widely advertised. The defendant, 
who as a dealer had been selling the complainant's product, 
became agent for a different make, sold under the name of 
"Knotair," which it had put up in boxes closely resembling 
those used by the complainant, and advertised and sold the same 
with a similar guarantee as the complainant, and to customers 
who called for "Holeproof," although not actually representing 
it as such. 

The court held that: "Knotair" as applied to a make of 
hosiery, was an arbitrary name and in itself did not constitute 
an infringement of the trade-mark "Holeproof." But inasmuch 
as defendant by its acts had evidenced an intention to obtain 
an advantage from the advertising and popularity of com- 
plainant's goods, it so acted as to constitute unfair competition 
and it would be and was enjoined. 

In Reymer & Bros., Inc. vs. Huyler's, 190 F. 83, it was held 
that the word " Metropolitan" when used by a manufacturer on 
pound and half-pound boxes of chocolates was an arbitrary 
and fanciful word, and constituted a valid trade-mark, which 
was infringed by its use by another, although employed in con- 
nection with other words in the sale of chocolate cakes at candy 
stores in the same city and vicinity where the trade-mark had 
become identified by long use with the goods of the first user. 

As bearing on this point, the Court said: 

"Complainant's trade-mark then being a valid trade-mark, 
and one to the exclusive use of which, as used by the complainant, 
it is entitled, it only remains to determine whether or not re- 
spondents have infringed. It clearly appears, by a comparison 
of the packages used by complainant and respondents, that the 
words 'Metropolitan,* 'Chocolate,' or 'Chocolates' are conspicu- 
ously presented. The different shape of the package is not likely 
to be observed by the ordinary purchaser because the class of goods 
being dealt in, candies and chocolates, are placed in many different 
kinds of packages by the same manufacturer. The ordinary 
person having in mind chocolate which is ready for consumption 
and 'Metropolitan' as descriptive of Reymer's chocolate, is un- 
likely to look further than for the two words. These he finds on 
both packages. As said in Celluloid Manufacturing Company vs. 
Cellonite_ Manufacturing Company, 32 F. 94: 'Similarity, not 
identity, is the usual recourse when one party seeks to benefit him- 
self by the good name of another.'" 



50 Trade-Marks, Trade-Names. 

In Hartzler et al, vs. Goshen Churn & Ladder Co., 104 N. E. 
34, the plaintiff had used the name "Security" as a trade-mark 
for ladders of its manufacture, and it was held that it was en- 
titled to an injunction to prevent the defendant from using the 
corporate name "Security Ladder Company." 

In Charles E. Hires Co. vs. Xepapas, 180 F. 952, the com- 
plainant manufactured two preparations for making root beer. 
One was in syrup form, to be prepared as a beverage by the 
addition of carbonated water, and the other was an extract 
intended to be prepared as a beverage by the addition of sugar 
and water and fermented with yeast. Complainant had ex- 
tensively advertised its fountain syrup preparation, and the 
beverage prepared therefrom was called by consumers "Hires" 
or "Hires Root Beer." Defendant purchased the extract, and 
made a beverage therefrom by the addition of simple syrup and 
carbonated water, without following the directions to prepare 
it by fermentation with yeast, and sold the beverage as " Hires" 
or "Hires Root Beer." Held, that defendant's action constituted 
a violation of complainant's trade-name rights in the name 
"Hires." 

In De Voe Snuff Co. vs. Wolff, 206 F. 420, the plaintiff and its 
predecessors in business had for more than seventy years been 
continuously engaged in the manufacture of snuff, which was 
widely advertised and sold throughout the United States. 
During that time its mills had been known as the Eagle Mills, 
and it and its predecessors had used on their packages and 
stationery the picture of an eagle, together with the words 
"Eagle Mills" or "Eagle Snuff," so that its product had been 
long known to the trade and to purchasers in general as "Eagle 
Snuff." The Court held that the plaintiff had a common law 
trade-mark in the picture of an eagle and the word "Eagle" as 
applied to snuff, whether used in association with any other 
words or not, and that the use by the defendant on its packages 
of snuff of the picture of an eagle and the name "White Eagle 
Snuff" was an infringement, although both picture and name 
differed materially from those used by the plaintiff. The court 
further held that,it was not necessary to constitute infringement; 
that every element of a trade-mark should be appropriated, nor 
that it should be completely copied, the proper test being 
whether when taking the resemblances and differences into 
account, the former was so marked that the ordinary purchaser 
would be likely to be deceived thereby. The Court of Appeals 
said: 

"It is doubtless true that the dealer accustomed to handling 
plantiff's snuflf would be not deceived by the plaintiff's labels or 
advertising matter. But this is not, we think, true of the ultimate 
purchaser, if, as we have found to be the fact, the name 'Eagle 
SnufT' has come to be associated in the minds of the public with, and 
to represent, plaintiff's product. We think it clear that the 
ordinary purchaser accustomed to buy and use the plaintiff's snuflf 
and not seeing the respective products side by side, could readily 
be deceived into purchasing defendant's product as that of the 
complainant, presenting as the former does the idea of Eagle Snuff 



Unfair Business Competition. 51 

as a permanent character. It may be true that the cautious and 
discriminating purchaser is not Hkely to be so misled; but protec- 
tion accorded to a trade-mark is not Hmited to the cautious and 
discriminating customer, but embraces the 'ordinary' or 'unwary' 
purchaser as well." 

In Taendticksfabriks Akticbologat Vulcan vs. M^^ers, 139 
N. Y. 364, the Court of Appeals of the State of New York said 

"No evidence has been given or offered to show that any 
person had actually been deceived by the imitation of com- 
plainant's trade-mark, and we think that none was necessary for 
the maintenance of the action. It is the liability to deception 
which the remedy may be invoked to prevent. It is sufficient if 
injury to the complainant's business is threatened or imminent, to 
authorize the Court to intervene to prevent its occurrence. The 
owner is not required to wait until the wrongful use of his trade- 
mark has been continued for such a length of time as to cause some 
substantial pecuniary loss." 

See also Benjamin Moore & Co. vs. Auwell, 178 F. 543; North- 
western Consolidated Milling Company vs. Mauser & Cressman, 
162 F. 1004; Chalmers Knitting Company vs. Columbia Mesh 
Knitting Co., 160 F. 1013; Eureka Fire Hose Co. vs. Eureka 
Rubber Mfg. Co, 60 A. 561. 



XIV. 

Defense that Complainant and Defendant Are 
Not Competitors 

It is a good defense to a suit for infringement that com- 
plainant and defendant do not trade in the same lines of mer- 
chandise and therefore are not competitors. The difference, 
however, must be a decided one to allow the defendant to avail 
himself of this defense. _ 

In Elgin National Watch Co. vs. Loveland, 132 F. 41, the 
Court said: 

"It is« urged that the business of the defendants as conducted 
by them is not in competition with that of the complainant; that 
complainant manufactures watch movements only; that de- 
fendants do not manufacture watch movements, but confine their 
business to the sale of watches upon mail orders only, and articles 
of jewelry, silverware and other goods of a cheap class, in which 
complainant does not deal, and therefore no injury results or can 
result to it. It is true that complainant could not complain of the 
use of the word "Elgin" by a manufacturer or vendor of some 
product not of the same general line as the complainant. Such a 
business would not be in competition with it." From the evidence 
produced, however, the Court decided that unfair competition 
existed. 

See also American Tobacco Co. vs. Polacsek, 170 F. 117; 
Charles E. Hires Com.pany vs. Xepapas, 180 F. 952; McGraw Tire 
& Rubber Co. vs. Griffith, 198 F. 566; and G. Heileman Brewing 
Co. vs. Independent Brewing Co., 191 F. 489. 



PART II. 

UNFAIR COMPETITION 

I. 



Definition 

Unfair cornpetition is competition consisting in the conduct 
of a trade or business in such a manner that there is either an 
expressed or imphed representation that the goods or business 
of one man are the goods and business of another. 

"It is the duty of a subsequent trader coming into an estab- 
lished trade not to dress up his goods or market them in such a way 
as to cause confusion between his goods or business and that of a 
prior trader. Even conceding that the later trader has an equal 
abstract right to use particular words, names or marks, yet if his 
unexplained use of them will cause confusion and deception, he 
must accompany such use with affirmative distinguishing features 
sufficient to render deception improbable. This rule applies to all 
classes of names, including descriptive, generic, personal and 
geographical names, which, although primarily publici juris, 
have acquired a secondary meaning and come to indicate the 
source of particular articles, the mere use of such a name by 
another, unaccompanied by adequate distinguishing statements, 
in itself amounts to an artifice calculated and intended to deceive, 
and constitutes unfair competition. 

"It is a question of fact in each case whether or not the goods 
or business of the subsequent trader have been so distinguished 
as to prevent any actual or probable confusion and deception. 
All the circumstances of the particular case must be considered. 
It is presumed that the public uses its senses and takes note of 
differences whi^h are thus disclosed. But on the other hand it 
must be remembered that similarity, not identity, is the usual 
recourse when one party seeks to benefit himself by the good 
name of another so that the mere existence of differences does not 
necessarily show honest and sufficient differentiation. A nice 
discrimination is not to be expected from the ordinary purchaser. 
Although differences between their respective labels and packages 
exist, and are readily apparent upon comparison, yet if the ordinary 
purchaser is liable to be deceived by the similarities which also 
exist, an injunction will be granted. _ Where the distinctive part 
of a name or mark is taken, minor differences afford no defense. 
Similarity in the main distinguishing features will usually be suffi- 
cient to constitute infringement or unfair competition." 

38 Cyc. 789:-90-9i. cited in Safe-Cabinet Co. vs. Globe- 
Wernicke Co., Ohio Ct. of Appeals decided Jan. 31, 1914. 



In Coats et al vs. Merrick Thread Co. et al., 149 U. S. 
the Court said: 

"The controversy between the two parties then is reduced to 
the single question whether, comparing the two designs upon the 
main or upper end of the spool, there is such resemblance as to 
indicate an intent on th„ part of defendants to put off their thread 
upon the public as that of the plaintiffs, and thus to trade upon 
their reputation. There can be no question of the soundness of 

52 



562 



Unfair Business Competition. 53 

the plaintiffs' proposition that, irrespective of the technical ques- 
tion of trade-mark, the defendants have no right to dress their 
goods up in such manner as to deceive an intending purchaser, 
and induce him to believe he is buying those of the plaintiffs. 
Rival manufacturers may lawfully compete for the patronage of 
the public in the quality and price of their goods, in the beauty and 
tastefulness of their enclosing packages, in the extent of their 
advertising, and in the employment of agents, but they have no 
right, by imitative devices, to beguile the public into buying their 
wares under the impression they are buying those of their rivals." 

In Sayre et al vs. McGill Ticket Punch Co., 200 F. 771, the 
Court defined unfair competition as follows: 

"Unfair competition is the passing off or attempting to pass off 
on the public the goods and business of one as being the goods and 
business of another." 

See Fuller vs. Huff, 104 F. 141, 43 CCA. 453; Keuffel & Esser 
Co. vs. H. S. Crocker Co. 118 F. 187; Drake Medicine Co. et al vs. 
Glessner, 68 Ohio St. 337; Dyment vs. Lewis, 123 N.W. 244; 
Forster Mfg. Co. vs. Cutter Tower Co. 97 N.E. 749. 



II. 

Distinction Between Infringement and Unfair 
Competition 

The distinction between infringement and unfair com- 
petition has been pointed out in numerous decisions. 

In G. W. Cole Co. vs. American Cement & Oil Company, 
[30 F. 703, the Court said: 

"An infringement of a trade-mark consists in the use of the 
genuine upon substituted goods or of an exact copy or reproduc- 
tion of the genuine, or in the use of an imitation in which the 
difference is colorable only, and the resemblance avails to mislead 
so that the goods to which the spurious trade-mark is affixed are 
likely to be mistaken for the genuine product; and this upon the 
ground that the trade-mark adopted by one is the exclusive 
J property of its proprietor, and such use of the genuine, or such 

imitation of it, is an invasion of his right and property. Unfair 
competition is distinguishable from the infringement of a trade- 
mark in this: That it does not necessarily involve the question of 
the exclusive right of another to the use of the name, symbol or 
; device. A word may be purely generic or descriptive, and so not 

! capable of becoming an arbitrary trade-mark, and yet there may 

by an unfair use of such word or symbol which will constitute 
; unfair competition. Thus a proper or geographical name is not the 

i subject of a trade-mark, but may be so used by another, unfairly 

I producing confusion of goods, and so come under the condemna- 

tion of unfair trade, and its use will be enjoined. The right to the 
use of an arbitrary name or device as indicia of origin is protected 
upon the ground of a legal right to its use by the person appropriat- 
- ing it." 

In Metcalf vs. Hanover Star Milling Co., 204 F. 211, the 

Court said: 

"Infringement is the wrongful copying and setting forth of an 
article well calculated to be taken for one already established in 
the trade, and is regarded in the law as analogous to trespass. 
Unfair competition consists in the placing on the established trade 
of another an article or commodity dressed so as to be very like 
the other and in palming off the imitation as the original." 



54 Trade-Marks, Trade-Names. 

In Hanover Star Milling Co. vs. Allen & Wheeler Co., 208 F 
518, the Circuit Court of Appeals, Seventh Circuit, the Court 
said as follows: 

"In both the 'trade-mark' and the 'unfair competition' cases 
the ground of the action and the reason for the remedy are identi- 
cal. They are all cases of unfair competition in trade, and the 
remedy is to tie the hands of the unfair trader. To the extent that 
differences exist, they pertain, not to the underlying principle, 
but to the methods and degrees of proof required to enforce the 
principle. If a dealer has adopted a true trade-mark, his trade has 
given the mark its only meaning, and he need produce no other 
proof respecting meaning. _ If he has applied to his article a mark 
or name that had an existing meaning, it is incumbent on him to 
establish the fact that his trade has added a new meaning that is 
exclusively appendant to his trade. If a defendant has put into a 
common market his articles bearing another dealer's technical 
trade-mark, no further proof of fraud is required. If a defendant 
has put into a common market his articles bearing a mark or name 
that had a common meaning, the complainant must show that the 
defendant is using the mark or name, not in its common meaning, 
but in its new meaning created by the complainant. In 'trade- 
mark' cases, it is sometimes said that proof of fraudulent intent 
need not be made. This is hardly accurate; the truth being that 
proof of knowing use carries proof of intent." 

In Pope Automatic Merchandising Co. et al is. McCrum- 
Howell Co., 191 F. 979, it was held that the manufacturer of an 
unpatented mechanical implement, who had selected unpainted 
aluminum as the most suitable material and had adopted the 
most simple, efficient, and economical form of construction in 
which the combination could probably be embodied, with nothing 
for embellishment or distinction, except a name-plate, could not 
charge a competitor with unfair competition, because, for the 
same utilitarian reasons, he used the same construction in all 
respects, excepting as to the name-plate, which he made dis- 
tinctive, no deception of purchasers being shown. 

III. 

Nature of Unfair Competition 

The following cases will give a fair idea of the nature of unfair 
competition and the right to protection against it: 

In Pillsbury- Washburn Flour Co. et al vs. Eagle 
86 F. 608, certain millers in Minneapolis, Minn., and 
their predecessors in business had, for over thirty 
years, made flour by the roller patent process and had 
used as brands the words "Minneapolis," "Minne- 
sota" and "Minnesota Patent," etc. The words 
" Minnesota " or " Minnesota Patent " meant that the 
flour was made under the roller patent process some- 
where in Minnesota, while the word "Minneapolis" 
signified to the trade that the flour was made at a 
Minneapolis flouring mill. The defendant, who was 
a dealer in Chicago, 111., obtained from millers at 
Milwaukee, Wis., an inferior grade of flour which he 



Unfair Business Competition. 55 

labeled "Best Minnesota Patent, Minneapolis, Minn.," 
and advertised his flour as made at Minneapolis, with 
the result that the public was deceived into buying his 
flour under the belief that it was made at Minneapolis, 
whereby the public was defrauded and the business of 
the Minneapolis millers damaged. The Court held 
that it was within their province to grant relief pro- 
hibiting the fraud and preventing the damage to the 
business of the Minneapolis millers. 

In Selchow et al vs. Chaffee & Selchow Mfg. Co., 
132 F. 996, the complainant had introduced into this 
country thirty-five years prior to the commencement 
of this action a game, which was made and sold under 
the name of "Parcheesi." This name it registered 
in good faith as a trade-mark in the Patent Office. 
The defendant, a manufacturer, appropriated for its 
own use the name "Parcheesi" which had become 
known and popular through its 'use by the com- 
plainant, and also incorporated the complainant's 
name "Selchow" in its own corporate name without 
any apparent reason except to deceive the public as 
to the origin of the goods which it sold. 

The Court said: 

"A careful examination of all the evidence fails to disclose any 
reason for the use by the defendant of the word 'Parcheesi' as 
designating its goods, or of the name 'Selchow' in the corporate 
name, except to confuse the public, and enable it to gain the 
market and trade built up by the complainants. Defendant is 
clearly guilty of unfair competition in trade, and the complainants 
are entitled to a decree restraining the use by defendant of the 
word or name ' Parcheesi ' and of the name ' Selchow ' in the name 
of the firm, and also for an accounting." 

In Enterprise Manufacturing Co. vs. Landers, 
Frary & Clark, 131 F. 240, the defendants ad- 
mitted that they were manufacturing and selling 
coffee-grinding mills in competition with the mills of 
the complainant, and that they had used parts of the 
complainant's mills as patterns wherever it was con- 
venient or profitable to do so, and that at the time the 
action was brought they were still making and selling 
mills which in effectiveness and attractiveness were 
equal to the goods sold by complainant. The Court 
held that such competition was unlawful and entitled 
the complainant to an injunction. 

The Court said: 

"No doubt with such identity in attractiveness, competition 
with complainant's mills would be more effective, but defendants 
overlooked the fact that courts of equity will not allow a man to 
palm off his goods as those of another, whether his misrepresenta- 
tions are made by word of mouth, or more subtly by simulating 
the colocation of details of appearance by which the consuming 
public has come to recognize the product of his competitor." 



56 Trade-Marks, Trade-Names. 

In Dennison Manufacturing Co. vs. Scharf Tag, 
Label & Box Company, 135 F. 625, the Court held 
that a series of numbers used by a manufacturer of 
labels in its catalogues and in connection with its 
corporate name on the boxes containing its labels, not 
primarily to indicate origin, but to designate the 
color, shape and size of the label, each kind being 
given a different number, did not in themselves con- 
stitute good trade-marks, and that the manufacturer 
was not entitled to an injunction to restrain the use of 
the same numbers in the same way and for similar 
purpose by another, in connection with the latter's 
own name, either on the ground of infringement of a 
trade-mark or of unfair competition, there being no 
attempt to deceive in dress or style of package, and 
the labels themselves being such as were open to any- 
one to make. 

In Diamond Match Co. vs. Saginaw Match Co., 
142 F. 727, the complainant manufactured tipped 
matches, and it was held that one who without a 
patent manufactured tipped matches in which it was 
essential that the head and the tip should be of different 
colors to enable users to distinguish the tip on which 
the match should be struck, was not entitled to main- 
tain a monopoly in the use of any two particular colors 
merely because he used them first, and that their 
use by another manufacturer without any simulation 
of packages calculated to deceive purchasers as to 
the origin of the goods, did not constitute unfair com- 
petition. 

The Court said: 

"The primary colors, even adding black and white, are but few. 
If two of these colors can be appropriated for one brand of tipped 
matches, it will not take long to appropriate the rest. Thus, by 
appropriating the colors, the manufacture of tipped matches 
could be monopolized by a few vigilant concerns without any 
patent whatever." 

In R. J. Reynolds Tobacco Co. vs. Allen Bros. 
Tobacco Co., 151 F. 819, it was shown that the com- 
plainant and their predecessors in business from 
about 1880 had made and sold a brand of plug 
tobacco known as "Schnapps" and that in 1894 it had 
commenced placing upon the plugs tin tags having 
a dark background with the word "Schnapps" 
thereon in red letters slanting backward, which tag, as 
shown by the evidence, was novel and distinctive. 
During the following twelve years nearly 800,000,000 
of such tags were used and also several million ad- 
vertisements, hangers, etc., having thereon pictures 
of this tag which had become known throughout the 
Southern states as the distinctive mark of the Schnapps 



Unfair Business Competition. 57 

brand. It was shown that many of the retail cus- 
tomers were unable to read and identified the com- 
plainant's tobacco entirely by the tag and the size and 
shape of the plug. Some years later the defendant 
placed upon the market a cheaper grade of tobacco 
in plugs of the same size and shape as those of the 
complainant, and with tags of the same size, shape, 
style and colors; the only difference being in the use of 
the name "Traveler" instead of "Schnapps," which 
difference could not be distinguished even at a short 
distance. The evidence showed that the simulation 
was intended to and did in fact deceive customers who 
desired to purchase the product of the complainant. 

The Court held that such simulation constituted 
unfair competition and entitled the complainant to 
injunctive relief. 

In Saxlehner vs. Wagner, 157 F. 745 and 216 U. S. 
375, the complainant was the owner of a trade-name 
or trade-mark "Hunjadi Janos," for a natural bitter 
water, and it was held that in the absence of fraud or 
unfair competition it could not enjoin a manufacturer 
of an artificial bitter water from advertising and 
labeling his production as "Artificial Hunjadi," 
especially since the word "Hunjadi" had become a 
generic name for mineral waters of a certain type 
coming from a more less extensive district, if not 
from anywhere in Hungary. 

In Prest-0-Lite Mfg. Co. vs. Avery Lighting Co., 
161 F. 648, the complainant manufactured and sold 
for use on automobiles patented tanks containing 
acetylene gas. When the gas was exhausted it ex- 
changed a filled tank for the empty one, which it re- 
paired, repacked if necessary, and refilled. Each tank 
bore a metal plate on which was engraved the com- 
plainant's trade-mark "Prest-0-Lite," the number 
and a patent notice. The defendant was a business 
competitor and made and sold tanks and gas under a 
different name. It bought and exchanged the empty 
tanks of the complainant and refilled and resold the 
same without removing the plate, although in some 
cases it covered a part of the plate by a paper label, 
easily removable, stating that the tank had been re- 
filled by it. The court held that such acts infringed 
the trade-mark of the complainant, and also that there 
was unfair competition, which entitled the com- 
plainant to injunctive relief. 

The Court said: 

"The complainant is entitled to a preliminary injunction 
restraining the defendant from selling or passing off to its customers 
or the trade any of these 'Prest-0-Lite' gas tanks, filled with 



58 Trade-Marks, Trade-Names. 



acetylene gas, unless it removes therefrom the metal engraved 
plate or completely erases the words and figures thereon, and 
places on the same a plainly printed label stating that it does not 
contain gas and acetone made by the Prest-0-Lite Co." 

In Dixie Cotton Felt Mattress Co. et al vs. 
Stearns & Foster Co., 185 F. 431, the complainant 
was a manufacturer of mattresses of different grades, 
which it advertised and sold extensively under certain 
trade-names. The defendant made and sold mat- 
tresses of inferior material, marked with the same 
names as used by the complainant, and sold these 
mattresses to a large store which previously had 
handled the mattresses of the complainant. The 
defendant also furnished for display in store windows 
sample mattresses of the same quality as those of the 
complainant, which sample mattresses were exposed 
cut open to show the material. The court held that 
the purpose was clearly to deceive purchasers into 
buying such goods for those of the complainant, and 
that the complainant was entitled to an injunction. 

In L. E. Waterman Co. vs. Modern Pen Co., 197 
F. 534, the complainant, L. E. Waterman Co., had 
established and built up a business in the sale of 
fountain pens under the name "Waterman's. Ideal," 
when Arhtur A. Waterman left its employ and entered 
into a partnership under the name "A. A. Waterman 
& Co.," for the manufacture and sale of pens in corn- 
petition with the complainant. Afterwards this 
latter company transferred its business, good- will, and 
the right to the name "A. A. Waterman & Co." to 
the defendant. It was clearly shown by the evidence 
that the use of the partnership name on the defend- 
ant's pens created confusion. In deciding this case 
the court held that to avoid this confusion and the 
deception of customers, the defendant v/ould be en- 
joined from using the name "Waterman" at all 
unless it substituted for its firm name on its pens the 
name, "Arthur A. Waterman & Co.," and followed it 
by the words "Not connected with the L. E. Water- 
man Co." 

The Court said: 

"The record clearly demonstrates the confusion arising from 
the use by the defendant of the name 'A. A. Waterman & Co.' in 
the pen business, in view of its similarity to the name of the com- 
plainant. The defendant has the right to use the name, but the 
complainant and the public have the right to insist that provision 
be made for minimizing the confusion arising from such a use so 
far as practicable." 

See also Keystone Type Foundry vs. Portland Publishing Co., 
180 F. 301; Siegert vs. Gandolfi, 14Q F. 100; American Wine Co. 
vs. Kohlman, 158 F. 830; Coats vs. Merrick Thread Co., 149 U.S. 
562; Bates Numbering Machine Co. vs. Bates Mfg. Co., 178 F, 



Unfair Business Competition. 59 



68i; McGraw Tire & Rubber Co. vs. Griffith, 198 F. 566; Wolf 
Bros. vs. Hamilton-Brown Shoe Co., 165 F. 413; reversed in 192 F. 
930; Pope Automatic Merchandising Co. vs. McCrum-Howell Co., 
191 F. 979; Strause vs. Weil, 191 F. 527; L. E. Waterman Co. vs. 
Modern Pen Co., 193 F. 242 ; Postal Telegraph-Cable Co. vs. 
Livermore & Knight Co., 188 F. 696; Howard Dustless Duster Co. 
vs. Carleton, 187 F. 472; and Mississippi Wire Glass Co. vs. Con- 
tinuous Glass Pressing Co., 8r A. 374; Anheuser-Busch Brewing 
Ass'n2'5. Piza, 24 F. 149; Nokes vs. Mueller, 72 111. App. 431; N.Y. 
Cab Co. vs. Mooney, 15 W. U. Cases 152. 



IV. 
Simulation of Merchandise and Dress of Goods 

Equity wiU not permit one manufacturer to dress his mer- 
chandise in imitation and simulation of the merchandise of a 
competitor whether such imitation be by the use of cartons, 
\^'rappers, labels, bottles, etc., simulating those used by another 
or by imitating the non-essential, artistic features of the mer- 
chandise itself. 

In American Chicle Co. vs. W. J. White Chicle Co., 
et al, 196 F. 977, it was held that the defendant had 
intentionally imitated the packages, dress and ad- 
vertisements of chewing gum made and sold by the 
complainant to such an extent as to constitute unfair 
competition and to entitle the complainant to an in- 
junction. 

The Court said: 

"Upon the discs of the complainant's cards are printed the 
words 'Chew White's Yucatan Gum' while upon the defendant's 
gum are the words 'Use White's Meadow Alints to Chew,' the 
words 'Yucatan' and 'Meadow Mints' being in larger type than 
the other words, while around the discs at the margins of the cards 
of both are printed various catch phrases. The cards are of many 
colors, those of the complainant being of red, white and blue, 
while those of the defendant company are of red, yellow and green, 
and are manifestly a simulation of complainant's." The Court, 
although denjang a preliminary injunction restraining the de- 
fendant company from using the word 'White' in connection with 
the sale of its chewing gum, said "but I think it (defendant) 
should not be permitted to use the pink wrapper and pink band or 
label binding together the pieces of gum, and should not be per- 
mitted to use the square advertising cards which apparently 
simulate the complainant's, for such are calculated to induce 
buyers of chewing gum to believe that the product of the defendant 
company is the product of the complainant." 

In Yale & Towne Mf g. Co. y^. Alder, 154 F. 37.it was 
held that a manufacturer of locks who deliberately and 
intentionally copied a higher priced lock made by an- 
other manufacturer in form, size, color, lettering and 
details of finish so that the two were substantially 
identical in appearance to a casual observer, and re- 
tail purchasers were likely to mistake one for the other, 



60 Trade-Marks, Trade-Names. 

was chargeable with unfair competition, although the 
parts of the lock separately might have been open to 
his appropriation. 

The Court said: 

" Many of the features of the plaintiff's padlock were separately 
a fair subject of appropriation by rival manufacturers because they 
were not original with the plaintiff, but the plaintiff was the first 
to assemble them together in the concrete form in which its pad- 
lock has become known to the public as its product; and while we 
cannot say that the appropriation by the defendant of this par- 
ticular feature or that particular feature would have been unfair, 
we can say that when all the prominent ones have been appro- 
priated and so assembled together with slight variations in some 
of them, together they would produce the same general effect and 
the ordinary purchaser would not be apt to discover the difference. 
Enough appears to establish unfair competition." 

In George Frost Co. vs. E. B. Estes & Sons, 156 F. 
677, the complainant manufactured a hose supporter 
having a rubber button for attachment to the hose 
which was protected by a patent and which it ad- 
vertised and sold under the trade-name of "Velvet 
Grip." The defendant made and sold wooden but- 
tons intended for the same use colored in imitation of 
rubber and used on hose supporters which were sold 
by dealers as rubber buttoned supporters and some- 
times as "Velvet Grip" supporters. 

The Court held that such sale? constituted un- 
fair competition and that the defendant was charge- 
able as a contributor thereto and would be enjoined. 

In Rushmore vs. Saxon, 158 F. 499, Aff. 170 F. 
1 02 1, the complainant was a manufacturer of search- 
light lamps for automobiles, known generally by his 
name as ' ' Rushmore ' ' lamps. He also designed a new 
and distinctive ornamental shell to distinguish his 
lamps from those of other makers, such peculiar 
design being non-functional. The defendant, who 
was also a maker of lamps, and a competitor of the 
complainant, copied the latter's shell in all particulars, 
even to defects, although as shown by the evidence, 
the shape of the defendant's shell rendered his own 
lamps less effective for use. As a result, there was 
nothing to distinguish his lamps in appearance from 
those of the complainant, except the reading_ matter 
on a small and inconspicuous name-plate, which was 
also needlessly put on the same place on the shell 
as the plate of the complainant. The defendant 
furthermore sold and billed his lamps to purchasers as 
"Rushmore" lamps. His lamps, however, were of 
inferior material and of cheaper construction, and 
could be and were sold at a less price than those of the 
complainant. The court held that the defendant was 
chargeable with unfair competition, and that the 



Unfair Business Competition. 61 

complainant was entitled to an injunction to restrain 
the same, the imitation being clearly by design, and 
for the purpose of misleading purchasers, to the in- 
jury of the complainant and to the advantage of the 
defendant. 

In Cook & Bernheimer Co. vs. Ross et al, 73 F. 203, 
complainant bottled whiskey and sold the same under 
labels bearing the distiller's guarantee of purity. The 
bottles used by the complainant were of an original 
and peculiar shape and, by means of extensive ad- 
vertising, such bottles came to be generally relied 
upon by purchasers as a means of identifying the 
whiskey bottled by the complainant. Some time 
after the adoption by the complainant of his peculiarly 
shaped bottles, the defendant, who had been dealing 
for a number of years in the same whiskey which was 
bottled by themselves, began to use a bottle of pre- 
cisely similar shape and appearance to that used by 
the complainant, although bearing labels which were 
in no sense imitations of those used by the com- 
plainant. 

The Court held that the use of such bottles by the 
defendant constituted unfair competition and should 
be restrained. 

In Sterling Remedy Co. vs. Spermine Medical Co., 
112 F. 1000, the Court said: 

"We have spoken so frequently on the subject of unfair compe- 
tition in trade and have declared the principles which, as we 
conceive, govern such cases, that the case before us calls for no 
special consideration on the facts. There was here a manifest 
attempt to put upon the public the goods of the defendant as those 
of the complainant. The latter had provided a peculiar form for 
its tablets and a box of peculiar shape. This form and shape had 
not before been used in connection with such medicine. It is clear 
that the defendant adopted the style and shape of the boxes, the 
color of the tablet and the letterpress upon the boxes and in 
advertising, to palm off his goods as those of the complainant. It 
is not a case of accidental imitation in one respect; it is a case of 
deliberate and designed imitation in all respects. The facts bring 
the case under the ban of the law and the complainant was en- 
titled to relief as well as against the form of the tablet and shape 
of the boxes as against the word ' Castorets.' " 

In Bates Mfg. Co. vs. Bates Machine Co., 141 F. 
213, the Court said: 

"But the complainant is clearly entitled to the relief sought 
on the second ground mentioned in its prayer for relief, namely, 
that the defendant be enjoined from imitating the labels on the 
complainant's boxes. The complainant's hand-numbering ma- 
chines have long been put up in small rectangular boxes, upon the 
outer surfaces of which are pasted labels setting forth matters sup- 
posed to be of interest to the purchasers of the machine. On one 
end of each of these boxes is a label with the title 'A few Dont's.* 
The first two words "A Few" are in small capital letters; the last 
word ' Dont's ' is in large capital letters. Under this title are seven 
sentences, each sentence with the word 'Don't' in heavy type. 



62 Trade-Marks, Trade-Names. 



The first sentence is ' Don't use rubber stamp ink upon pad of this 
machine.' The defendant's machines are likewise packed in small 
rectangular boxes, upon the outer surfaces of which are pasted 
labels containing matters supposed to be of value to purchasers. 
On one end of the defendant's boxes is a label at the top of which 
is the title 'A Few Don'ts.' The words 'A Few' are in small 
capital letters, and the word 'Don'ts' in large capital letters. 
Under the title are seven sentences, each commencing with the 
word 'Don't' in heavy type. Four of these seven sentences are 
literally the same as those used upon the complainant's boxes. 
'Ihe other three are substantially the same. . . . Other striking 
similarities between the labels upon the boxes of the complainant 
and the defendant might be pointed out. I am satisfied that the 
defendant should not be permitted to use these labels in marketing 
its machines as ' Model No. 49.' They are calculated to induce 
the purchasing public to believe that the defendant's machine, 
known as 'Model No. 49,' is a product of the complainant com- 
pany." An injunction was granted. * 

In Gorham Mfg. Co. vs. Weintraub, 196 F. 957, 
the Court said: 

" It is proven that the defendants, with the intention of divert- 
ing to themselves a portion of the good-^ill of complainant's busi- 
ness, have put upon the market and sold a silver-plated ware of 
inferior grade, but of the same general appearance as that of the 
complainant's solid or sterling ware, and to accomplish their 
purpose have used the cpmplainant's insignia or trade-mark to 
cause it to be believed that their goods were of the same quality 
as complainant's. . . . That the defendants intended to engage in 
competition with complainant and by unfair and dishonest means 
to divert to themselves a part of its business is undeniable; actual 
confusion from the similarity of marking sufficiently appearing by 
the testimony of witnesses. . . . The complainant is entitled to a 
decree as prayed for in the bill, with costs." 

See also Charles E. Hires Co. vs. Consumers Co., 100 F. 809; 
Ohio Baking Co. vs. National Biscuit Co., 127 F. 116; Baglin vs- 
Cusenier Co., 156 F. 1019- modified in 164 F. 225; Mcllhenny vs. 
Hathaway, 195 F. 652; William Wrigley, Jr. Co. vs. L. P. Larson, 
Jr., Co. 195 F. s68; Crystaleid Water Co. vs. Schultz, 135 N.Y.Supp. 
273; Wirtz vs. Eagle Bottling Co., 24 A. 658; Monopol Tobacco 
Works 115. Gensior, 66 N.Y. Supp. 155. 

Putnam Nail Co. vs. Bennett, 43 F. 800; E. B. Estes & S041 
vs. George Frost Co., 176 F. 338; B. Moore & Co. vs. Auwell, 
172 F. 508; aff. 178 F. 543; Holeproof Hosiery Co. vs. Fitts, 167 F. 
378; National Water Co. vs. Hertz, 177 F. 607; Lovell-McConnell 
Mfg. Co. vs. American Ever-Ready Co., 19S F- 93 1; and Westcott 
Chuck Co. vs. Oneida Nat. Chuck Co., 199 N.Y. 247, reversing 118 
N.Y. Supp. 1 149. 



The Acquisition of Secondary Meanings to 
Trade-Marks and Trade-Names 

The right to the use as a trade-mark or trade-name of a word 
or words descriptive or geographical in character may be ac- 
quired through long and continued use, provided that this use 
has been sufficient to impart to such word or words a secondary 
meaning whereby the proprietor or manufacturer and the origin 



Unfair Business Competition. 63 

of the goods have become specifically designated, and are so 
known to the trade and public. 

In Elgin Watch Company vs. Illinois Watch Case 
Co., 179 U. S. 665, Chief Justice Fuller said: 

"In other words the manufacturer of particular goods is 
entitled to the reputation they have acquired, and the public is 
entitled to the means of distinguishing between those, and other 
goods; and protection is accorded against unfair dealing, whether 
there be a technical trade-mark or not. The essence of the wrong 
consists in the sale of the goods of one manufacturer or vendor for 
those of another. If a plaintiff has the absolute right to the use 
of a particular word or words as a trade-mark, then, if an infringe- 
ment is shown, the wrongful or fraudulent intent is presumed, 
and although allowed to be rebutted in the exemption of damages, 
the further violation of the right of property will, nevertheless, be 
restrained. But where an alleged trade-mark is not in itself a good 
trade-mark, yet the use of the word has come to denote the par- 
ticular manufacturer or vendor, relief against unfair competition 
or perfidious dealing will be awarded by requiring the use of the 
word by another to be confined to its primary sense by such limi- 
tations as will prevent misapprehension on the question of origin. 
In the latter class of cases such circumstances must be made out 
as will show wrongful intent in fact, or justify that inference from 
the inevitable consequences of the act complained of." 

In Reddaway vs. Benham (Appeal Cases, 199 — 
1896), the plaintiff manufactured machine belting, 
which was sold in association with the trade-marks or 
trade-names "Camel'' or "Camel Hair." The yarn 
of the plaintiff's belting consisted chiefly of camel 
hair, and while this- yarn was commonly called 
"Camel Hair," it was not generally known that it 
consisted of the hair of the camel. The defendant 
manufactured a belting which it called "Camel- Hair 
Belting." Upon the findings of the jury the Court 
entered judgment for the plaintiff. On appeal this 
judgment w-as reversed and judgment entered for the 
defendant, as the Court in its opinion stated, that the 
words "Camel-Hair Belting" were descriptive of the 
article sold and the defendants were entitled to use 
these words in connection with the belting which they 
sold. On further appeal, however, to the House of 
Lords, the decision of the Court of Appeals was re- 
versed and Lord Hirshell, in stating his opinion, 
said: 

"In the present case the jury have found, and in my opinion 
there was ample evidence to justify it, that the words 'Camel 
Hair' had in the trade acquired a secondary significance in con- 
nection with belting; that they did not convey to persons dealing 
in belting the idea that it was made of camel's hair, but that it was 
belting manufactured by the plaintiffs. They have found that 
the effect of using the words in the manner in which they were used 
by the defendants would be to lead purchasers to believe that 
they were obtaining goods manufactured by the plaintiffs, and 
thus both to deceive them and to injure the plaintiff. On au- 
thority as well as on principle, I think the plaintiffs are on these 
facts entitled to relief." 



64 



Trade-Marks, Trade-Names. 



In C. A. Briggs Co. vs. National Wafer Co., 102 
Northwestern Rep. 87, plaintiffs employed in con- 
nection with the sale of their wafers the words 
"Boston Wafers" as a trade-name. Defendant 
questioned the right of the plaintiff to appropriate 
the words "Boston Wafers" as a trade-name, on the 
ground that they were both geographical and descrip- 
tive in character. The Court said: 

"But it is also true that a merely descriptive epithet or the 
name of a person or of a place may become so associated with a 
particular kind of goods, or with the specific product of a particular 
manufacturer, that the mere attaching of that word to a similar 
product without more would have all the effect of a falsehood; and 
in such a case while the use of that word can not be absolutely 
prohibited, it may be restrained unless accompanied with sufficient 
explanations or precautions to prevent confusion with the goods 
of the original manufacturer or vendor." 

In Rushmore vs. Saxson, 158 F. 499, Aff. 170 F. 
1 02 1, the Court said: 

"Coming to the other branch of the case, the alleged unlawful 
appropriation of the name 'Flare Front,' we find more difficulty. 
That name, in no grammatical sense, is descriptive. But a 
descriptive name, or a name which to some extent is descriptive, 
if this be such, may come to have a secondary meaning, one which 
when heard or seen indicates to the trade, and to purchasers of a 
certain article, the goods or manufacture of a certain maker; 
those of the one using the name, and no other. It then becomes 
the trade-name of that particular manufacturer using it to desig- 
nate his goods, and as such it is entitled to protection, provided he 
solely and arbitrarily selected and appropriated it." 

In the case of Standard Varnish Works vs. Fisher, 
Thorsen & Co., 153 F. 928, the Court said: 

"The preparation in question is very naturally called 'Turpen- 
tine Shellac,' as it consists principally of a mixing or combination 
of the two miore sim.ple ingredients, turpentine and shellac, and, 
of course, in its ordinary signification the name is merely descrip- 
tive of the compound. It can scarcely indicate origin or pro- 
prietorship, so that it is not a term or designation suitable for 
appropriation as a trade-mark in the technical sense. As a 
trade-name, it may be properly so employed, but within itself 
it is inapt for exclusive appropriation as a trade-mark. Beyond 
this, however, words or symbols naturally descriptive of the 
product, while not adapted for exclusive use_ as a trade-mark, 
may yet acquire, by long and general usage in connection with 
the preparation and by association with the name of the manu- 
facturer, a secondary meaning or signification, such as will express 
or betoken the goods of that manufacturer only, and in this 
sense will be entitled to protection from an unfair use of the 
designation or trade-name by others that may result in his injury 
or in fraud of the public." 

In Julius Kayser & Co. vs. Italian Silk Underwear 
Co., App. Div. (N.Y.), First Dept., decided February 
13, 19 1 4, the Court said: 

"It seems to me that the plaintiff has clearly established, as 
against the defendant, an exclusive right to the word ' Italian ' in 
connection with the silk underwear manufactured by it, and that 
the defendant's appropriation and use of the word in 1911, after 
plaintiff had made it valuable by long years of use, by registration 



Unfair Business Competition. 65 



in the Patent Office, and by building up a large and successful 
business, was a violation of plaintiff's rights." 

See also Hansen vs. Siegel-Cooper Co., io6 F. 691; Dr. A. Reed 
Cushion Shoe Co. vs. Frew, 158 F. 552; World's Dispensary Medi- 
cal Association vs. Pierce, 138 App. Div. 401 (N.Y.); David E. 
Foutz Co. vs. S. A. Foutz Stock Food Co., 163 F. 408; Elbs vs. 
Rochester Egg Carrier Co., 134 N.Y. Supp. 979; and Globe- 
Wernicke Co. vs. Brown, 121 F. 185; Lawrence Mfg. Co. vs. 
Tennessee Mfg. Co., 138 U.S. 550; Siegert z;5. Gandolpi, 149 F. 
100; Standard Varnish Works vs. Fisher, Thorsen & Co., 153 F. 
928; Heller & Merz Co. vs. Shaver et al, 102 F. 882; Lowe Bros. vs. 
Toledo Varnish Co., 168 F. 627; Rome Machine & Foundry Co. 
vs. Davis Foundry & Machine Co., 68 S.E. 800; Holeproof Hosiery 
Co. vs. Wallach Bros. 172 F. 859 (97 CCA. 263). (Also 190 F. 
608; Modified 192 F. 534); Perkins vs. Apollo Bros., 197 F- 476; 
Computing Scale Co. vs. Standard Computing Scale Co., 118 F. 
965 ; British-American Tobacco Co, vs. British- American Cigar 
Stores Co. 211 F. 933- 



VI. 

Substitution 

A manufacturer or dealer cannot substitute the merchandise 
of one where the merchandise of another is ordered, without 
informing the purchaser of that fact. 

In Samuel Brothers & Co. vs. Hostetter & Co., 118 
F. 258, it was held sufficient to support a finding that 
the defendant was engaged in unfair competition, 
although there w^as no proof of any customer having 
actually been deceived, on the testimony of two 
witnesses employed by the complainant. These 
witnesses testified that they had gone to the whole- 
sale liquor store of the defendant, where there had 
been sold to them by a clerk what was represented to 
them to be complainant's bitters, but which, in fact, 
was a spurious article made to imitate that of com- 
plainant's in appearance, taste and smell, and that 
they were also furnished by the clerk with empty 
bottles having thereon complainant's label and trade- 
mark to be used in retailing the bitters to customers. 

In Parkland Hills Blue Lick Water Co. vs. Haw- 
kins, 26 S. W. 387, the Court said: 

"In the case under consideration the name adopted by the 
appellees and their predecessors for the water from the Blue Lick 
Springs indicated the origin and ownership of the place of the 
product and is one in the exclusive use of which the appellees 
should be protected. The proof discloses a scheme by which 
when the thirsty patron of certain dealers in the City of Louisville 
called for Blue Lick Water, meaning genuine Blue Lick Water, 
which was confessedly the Nicholas County product, he was to be 
given water from the artesian well of the appellant. This was no 
less a fraud on the public than on the appellees, as the purchaser 
has the right to get whatever he seeks and the owner is entitled 
to the profit from the sale of the thing sought." 



66 Trade-Marks, Trade-Names. 

In Fisher et al vs. Blank, 138 N.Y. 244, it was 
held that as defendant's tea had been handed out and 
sold when plaintiff's "Black Package Tea" was asked 
for, and that purchasers of and dealers in defendant's 
tea were from the same class as those who purchased 
and dealt in tea placed upon the market by plaintiff, 
that defendant was guilty of unfair competition. 

In Enoch Morga,n's Sons Co. vs. Wendover, et al, 
43 F. 420, the Court held that the act of the salesman 
in offering "Pride of the Kitchen" in response to a 
demand for "Sapolio" was, though done silently, a 
positively unlawful act. Its unlawfulness consisted 
in an attempt to steal away the business of the com- 
plainant for the benefit of the manufacturers of 
"Pride of the Kitchen," and that it was clearly the 
object of the law of trade-marks to prevent acts of this 
character. 

In N. K. Fairbanks Co. vs. Dunn, 126 F. 227, the 
Court said: 

"The defendant, John F. Dunn, is conducting and transacting 
the business of a grocer at Little Falls, Rome, and Utica, in the 
state of New York. In his said business he had advertised Gold 
Dust, and has advertised to sell the same at a less price than the 
same can be obtained and sold for at a profit in the market. Hav- 
ing so advertised Gold Dust, the defendant has on several occa- 
sions knowingly and willfully and fraudulently handed out and 
delivered to his customers who called for Gold Dust, and who 
desired to purchase Gold Dust, and who expected they were 
purchasing and obtaining Gold Dust, another and inferior article 
known as Buffalo, and in so doing has not only imposed upon 
and defrauded purchasers to their damage and injury, but has 
injured the complainant. . . . 

"The acts complained of are unlawful. The defendant has no 
right to deliver Buffalo when the customer calls for Gold Dust. 
The customer has the right to receive Gold Dust when he calls for 
it, and the seller purports to fill his order without taking pains to 
examine the package delivered, and he is defrauded if an inferior 
article is substituted, even if the package bears a label showing it 
to be Buffalo, and not Gold Dust. 

"The customer at a grocery is not compelled to inspect every 
package called for to see that he gets what he orders. He has the 
right to assume that he gets what he orders. The merchant, by 
assuming to fill the order, represents that the goods put up and 
delivered are those ordered. The law is too well settled on this 
subject to require extended quotation. The manufacturer of an 
article placed upon the market for sale has the right to demand 
of the dealer who purports and advertises to sell it that he deliver 
his product when called for by the customer. 

"The injunction pendente lite is granted, and will issue." 

See also The Searchlight Gas Company vs. Prest-0-Lite Co., 
Seventh Circuit, April 14th, 1914; Horlicks Malted Milk Co. vs. 
A. Spiegel Co., et al, 144 Northwestern Rep. 272; Vitascope Co. vs. 
U. S. Phonograph Co., 83 F. 30; Newcomer & Lewis vs. Scriven Co., 
168 F. 621; Parozone Co., Ltd., j^5. Johnson Gibson, 1904, 21 R.P.C. 
317; Prest-0-Lite Co. vs. Avery Lighting Co., i6r F. 648; Holeproof 
Hosiery Co. vs. Wallach Bros., 172 F. 859; Vehicle Apron & Hood 
Co. vs. Am. Tire & Rubber Co., 193 F. 372; Rathbone Sard & Co. 
vs. Champion Steel Range Co., 189 F. 26; Prest-0-Lite Co. vs. Auto 
Acetylene Light Co., 191 F. 90. 



Unfair Business Competition. 67 



VII. 
Corporate Names 

It is well settled that one corporation cannot adopt and use 
the name of another corporation in the same line of business. 
Furthermore a corporation cannot use as part of its corporate 
title the trade-mark or trade-name of another earlier in the field, 
nor can anyone use as a trade-mark for the same line of business 
the title or part thereof of a corporation or firm. 

In Rubber & Celluloid Harness & Trimming 
Company vs. The Rubberbound Brush Co., 88 A, 
210, it was held that the use of the words 
"Rubber Bound" in defendant's corporate name was 
in contravention of plaintiff's rights in the term 
"Rubber Set" as applied to its merchandise. 

In Martell vs. St. Francis Hotel Co., 98 P. 11 16, it 
was held that the defendant would be enjoined from 
conducting its hotel under the same name as that of 
plaintiffs, in the same neighborhood, and previously 
established, such use resulting in confusion and injury 
to the hotels and the public; and this, though de- 
fendant's hotel was larger and more expensive, and 
catered more to a transient trade, while that of 
plaintiffs, though patronizing transients, was more of 
a family hotel. 

In Mt. Hope Cemetery Asso. vs. New Mt. Hope 
Cemetery Asso., 92 N.E. 912, complainant owned the 
"Mount Hope Cemetery" since 1856. Shortly be- 
fore suit was brought the defendant opened an adjoin- 
ing cemetery under the name "New Mount Hope 
Cemetery" and advertised that its lands were con- 
nected with the drives of the complainant, inviting 
the public to enter its grounds in that way. Held, 
that the names were so similar as to be liable to cause 
confusion, and that the defendant should be enjoined 
from the use of the name "New Mount Hope Ceme- 
tery. 

In Rosenburg vs. Fremont Undertaking Co., 114 
P. 886, it was held that a corporation could be 
enjoined from conducting a business under a name so 
similar to the name of a previously established corpo- 
ration, association or partnership, engaged in the same 
line of business that confusion or injury would result 
therefrom. 

In Dyment vs. Lewis, 123 N.W. 244, the plaintiff 
conducted his business under the name "Sioux City 
Robe & Tanning Co.," and built up a lucrative busi- 



f)8 Trade-Marks, Trade-Names. 

ness under this trade-name. Held, that equity would 
restrain another from engaging in the same business, 
at the same place, under the same name. 

In Kimball vs. Hall, 89 A. 166, plaintiff ad- 
vertised his business of cutting and welding metals 
by the oxy-acetylene, or oxy-carbide process, using 
the phrase "send it to Oxy," and became generally 
known in the trade and to his customers as "Oxy." 
Defendant put over a like shop on the same street, a 
sign " OXY Acetylene Welding & Cutting." Held, 
that such acts constitute unfair competition, and the 
fact that the plaintiff's business fell off while de- 
fendant's sign was up, and recovered when the 
sign was taken down, was prima facie e^^dence of 
damage. 

British- American Tobacco Co., Ltd., vs. British- 
American Cigar Stores Co., 211 F. 933. In this case 
complainant for eleven years had been extensively 
engaged in the wholesale tobacco business throughout 
the world, and had established an enviable reputa- 
tion, dealing under the name "British- American." 
Though authorized to sell at retail, it had not done 
so, in order to conserve its wholesale trade. Defend- 
ant, a New Jersey corporation without any connec- 
tion with complainant, organized itself to establish a 
chain of cigar stores under the name " British- Ameri- 
can Cigar Stores Company." Defendant had no 
business in England nor anywhere else to warrant the 
use of the name "British," and during the years suc- 
ceeding defendant's organization its use of the name 
"British- American" had caused confusion, and was 
calculated to lead the public to believe that there was 
some connection, financial or otherwise, between the 
companies, and induced the public to buy defendant's 
goods and its stocks and bonds, believing that they 
were issued by a corporation organized or connected 
with complainant. Held, that defendant's adoption 
of the words "British- American," which had be- 
come irrevocably associated with the tobacco busi- 
ness, of the Plaintiff was unlawful and would be en- 
joined. 

See also Northwestern Knitting Co. vs. Garon, 128 N.E. 288; 
Finney's Orchestra z/5. Finney's Famous Orchestra, 126 N.W. 198; 
Williams Soap Co. vs. J. B. Williams Soap Co., 193 F. 384; Wright 
Restaurant Co. vs. Seattle Restaurant Co., 122 Pac. Rep. 348; 
Selchowetal I's. Chaffee & Selchow Mfg. Co., 132 F. 996; Met. Tel. 
& Tel. Co. vs. Met. Tel. & Tel. Co., 141 N.Y.S. 598; Dunstan vs. 
Los Angeles Van & Storage Co., 131 Pac. Rep. 115; Lockport 
Canning Co. vs. Rosario Pusateri, 79 Misc. 293; Eastern Outfitting 
Co. vs. Manheim, no P. 23; Kansas Milling Co. vs. Kansas Flour 
Mills Co., 133 Pac. Rep. 542. 



Unfair Business Competition. 69 

VIII 
Accountings and Damages 

In cases of trade-mark infringement and unfair competition, 
where the plaintiff prevails and the Court believes that the latter is 
entitled to a substantial recovery, damages will be awarded and 
an accoimting as to the defendant's profits ordered. 

In Sawyer vs. Kellogg (9 Fed. 601), the Court said: 

"This is a motion to strike from the decree entered in the above 
case the clauses which direct an accounting and the payment of 
costs. . . . As to the accoimting. The counsel for the defendant 
rests his application to strike out on two grounds: First, Because 
the proofs show that the defendant is not the person liable to 
account to the complainant. The evidence is that the defendant 
was largely engaged in packing blues on his own account and for 
others in the trade; that all the blues covered by the infringing 
trade-mark were put up by him for the firm of James S. Barron & 
Co., dealers in wooden ware, rope, and cordage in New York, who 
placed the same upon the market; that he made no sales to anyone 
of the articles thus packed; but received pay from his employers 
solely for the work and labor of packing. The bill of complainant 
prays for an injunction, and for profits and damages. Having 
been adjudged an infringer of the trade-mark of the complainant, 
an injunction has been issued against him. Under the above state 
of facts, should he be compelled to account for profits and damages? 
We have no doubt about the propriety of the reference, or of the 
liability of the defendant, if it can be shown on the accounting 
that profits were made by his work and labor, or that damages 
resulted to the complainant therefrom. If he did not sell, the 
profits on the sales are not chargeable to him; but if any profits 
came to him for preparing the article for those who did sell, they 
belong to the complainant, and the object of the accounting is to 
ascertain that fact, and, if the defendant has damaged the com- 
plainant by the unlawful use of his trade-mark, the nature and 
extent of the damage is a proper subject of inquiry." 

In The Collins Co. vs. Oliver Ames & Sons Cor- 
poration, 18 Fed. Rep. 561, the Court said: 

"The plaintiff is entitled to a decree for a perpetual injunction 
(against the use of plaintiff's trade-mark) as prayed in the bill, 
and for an accounting before a master as to profits and damages, 
and for the costs of the suit." 

In Atlantic Milling Co. vs. Rowland et al, 2"/ Fed. 
Rep. 24, the Court said: 

"The final decree establishes the right of the orator to the use 
of the word 'Champion' as a trade-mark for flour; that the de- 
fendants have infringed upon that right; and that the orator is 
entitled to recover of them the profits to the defendants, and 
damages to the orator, due to the infringement. , . . 

"It is argued that the evidence does not show that the orator 
would have made this profit if the defendants had not. This 
might be true, and not affect the rights of the parties. If the 
defendants made profits by their invasion of the orator's rights, the 
orator is entitled to them whether the same profits would have 
been made by the orator or not, and not to any more if they 
would, for the same profits could not be made by both. But the 
master seems to have inferred that they would, and therefore to 
have found that the orator was damaged by the loss of profits to 
the same extent that the defendants saved by them. The fact 
that the flour of the orators bearing this mark was in the same 
market would seem to be sufficient to warrant this finding." 
Faber vs. Hovey,' i Wkly. Dig. 529; S. C. 73 N.Y. 592. 



70 Trade-Marks, Trade-Name^. 



In Williams vs. Mitchell, io6 Fed. Rep. i68, the 
Court said: 

"The complainants also assert error in that the decree denied 
them compensation for past unfair competition. In this respect, 
also, we think the court was in error. The decree declares that the 
defendants, by their imitation of the complainants' advertisements, 
had been guilty of deceiving purchasers and the public into be- 
lieving that the game boards of their make were the game boards 
made by the complainants. It declares an invasion of the com- 
plainants' rights, and the complainants are entitled, upon proper 
proof, to compensation to the extent of the invasion." 

In Florence Mfg. Co. vs. Dowd et al, 189 Fed. Rep. 
44, the Court said: 

"This is not a case where this court or the Circuit Court can say 
in advance that the complainant will be unable to establish the 
amount of the gains and profits which the defendants have made 
by reason of the unfair methods employed by them in dressing up 
their brushes to resemble the complainant's brushes. Except in 
those cases where the court is convinced that such proof is impossi- 
ble, an accounting shouJd be ordered. It is true that the action 
for unfair competition is based upon fraud, but this may be in- 
ferred from the circumstances. As was said by this court in the 
case of Fairbank vs. Windsor 124 Fed. 200, 61 CCA. 233: 

"In many of these unfair competition cases the fraudulent 
intent is inferred from the facts, sometimes against the sworn 
protestations of the infringer, that he was trying to differentiate 
his package from those of the complainant, not to simulate them. 

"That the complainant's task seems difficult and the result 
an inadequate return for time and labor expended is not now 
important. The complainant is entitled to its hearing before the 
master; if it fails in its proof the Circuit Court will deal with the 
situation as to costs and expenses when it enters the final decree." 

In Westcott Chuck Company vs. Oneida National 
Chuck Company, 199 N.Y. 247, modifying 118 N.Y.S. 
1 149, reversing 113 App. Div. 937, the Court said: 

"We think, however, that the trial court erred in failing to 
award the plaintiff damages. The court doubtless felt controlled 
in this respect by the decision of the Appellate Division, made on 
an appeal from a previous trial of the case (122 App. Div. 260), 
in which it was held that in the absence of proof of damage no 
pecuniary recovery could be had. It is possible that in an action 
at law for damages, proof of actual damage suffered by a plaintiff 
would be necessary to justify more than a nominal recovery. 
(Brown on Trade-marks, No. 499; l^aul on Trade-marks No. 324..) 
But this action is in equity. The plaintiff prayed as relief that tne 
defendant account for the profits made on its sales, and the law 
seems well settled that equity will treat the wrongdoer as a trustee 
for the plaintiff so far as the former has realized profits from its 
acts. (Brown on Trade-marks, No. 506; Paul on Trade-marks, No. 
326; see cases there cited. _ Singer Mfg. Co. vs. June Mfg. Co. 
supra.) It has been held in the United States Circuit Court of 
Appeals that a plaintiff is not limited to the profits realized by a 
defendant, but is entitled to what he would have made had the 
sales been made by him (Walter Baker & Co. vs. Stack, 130 F. 514). 

See also Atlantic Milling Co. vs. Robinson et al, 20 F. 217; 
Gillott vs. Esterbrook 48 N.Y. 374; Newman vs. Alvord 51 N.Y. 
189; Hier?'5. Abrahams 82 N.Y. 519; Walton rs. Crowley 3 Blatchf. 
440; Frazie vs. Frazier Lubricating Co. 18 Ills. Appeals 450; 
Avery vs. Meikle 85 Ky. 435; Benkert vs. Feder 34 F. 534; Hen- 
nessy et al vs. Wilmerding-Loewe Co. 103 F. 90; American Tin 
Plate Co. vs. Licking Roller Mill Co. 158 F. 690; J. F. Rowley Co. vs. 
Rowley 193 F. 390 ; Wolf Bros. vs. Hamilton-Brown Shoe Co. 
206 F. 611. 



Unfair Business Competition. 71 

Penal Laws 

Many states have, in addition to civil statutes regulating 
the • registration of trade- marks, penal laws for the protection 
of the owners of trade-marks against infringement by un- 
scrupulous competitors. In the limited space which we have 
here it would be impossible to give in detail the penal laws of the 
various states. For that reason we have only included in this 
work Sections 2353 and 2354 of the Penal Law of the State of 
New York, relative to the infringement of trade-marks. These 
sections read as follows: 

Sec. 2353. Imitation of a Trade-Mark Defined 

An "imitation of a trade-mark" is that which so far resembles 
a genuine trade-mark as to be likely to induce the belief that it is 
genuine, whether by the use of words or letters, similar in appear- 
ance or in sound, or by any sign, device or other means whatsoever. 

Sec. 2354. Offenses Against Trade-Marks 

A person who: 

1. Falsely makes or counterfeits a trade-mark; or, 

2. Affixee to any article of merchandise, a false or counterfeit 
trade-mark, knowing the same to be false or counterfeit, or the 
genuine trade-mark, or an imitation of the trade-mark of another 
without the latter's consent; or, 

3. Knowingly sells, or keeps or offers for sale, an article of 
merchandise to which is affixed a false or counterfeit trade-mark, 
or the genuine trade-mark, or an imitation of the trade-mark of 
another, without the latter's consent; or, 

4. Has in his possession a counterfeit trade-mark, knowing it 
to be counterfeit, or a die, plate, brand or other thing for the pur- 
pose of falsely making or counterfeiting a trade-mark; or 

5. Makes or sells, or offers to sell or dispose of, or has in his 
possession with intent to sell or dispose of, an article of merchandise 
with such a trade-mark or label as to appear to indicate the 
quantity, quality, character, place of manufacture or production 
or persons manufacturing, packing, bottling, boxing or producing 
the article, but not indicating it truly; or, 

6. Knowingly sells, offers or exposes for sale, any goods 
which are represented in any manner, by word or deed, to be the 
manufacture, packing, bottling, boxing or product of any person, 
firm or corporation, other than himself, unless such goods are 
contained in the original packages, box or bottle and under the 
labels, marks or names placed thereon by the manufacturer who is 
entitled to use such marks, names, brands or trade-marks; or, 

7. Shall sell or shall expose for sale any goods in bulk, to which 
no label or trade-mark shall be attached, and shall by repre- 
sentation, name or mark written or printed thereon, represent 
that such goods are the production or manufacture of a person 
who is not the manufacturer, 

Is guilty of a misdemeanor and punishable for the first offense 
by a fine not less than fifty dollars nor more than five hundred 
dollars or imprisonment for not more than one year, or both such 
fine and imprisonment, and for each subsequent offense by im- 
prisonment for not less than thirty days or more than one year, 
or by both such imprisonment and a fine of not less than five 
hundred dollars or more than one thousand dollars. 



72 Trade-Marks, Trade-Names. 



See Prest-0-Lite Co. vs. Frederick Ray et al, 147 N. Y. Supp. 
138; Peoples' Milk Co. vs. Doty, 118 N.Y.S. 966. 64 Misc. R. 595; 
Haslinghuis et al 115. Hencken, Haaren & Co., 143 N. Y. Supp. I09S; 
People vs. Streep, 128 N.Y.S. 172; People vs. Luhrs, 127 App. Div. 
634, Aflf. 19s N.Y. 377; People vs. Strieker, 102 N.E. 216; State vs. 
Bascowitz, 156 S.W. 945; People vs. Cannon, 139 N.Y. 32; Mul- 
lins vs. People, 24 N.Y. 399; People vs. New York Carbonic Acid 
Gas Co. 196 N.Y. 421; Ohio Oil Co. vs. Indiana, 56 App. Div. 143; 
Ricker vs. Leigh, 74 App. Div. 137; Howard vs. Moot, 64 N.Y. 262; 
Coleman vs. Shattuck, 62 N.Y. 348; People vs. Johnston, 185 N.Y. 
229. 



CHAPTER VI 




The Trade-Mark Work of Munn & Company 

WE began to practice as trade-mark and patent solicitors 
before the Civil War, and for seventy years we have 
been engaged continuously in this work. 
During our two generations of service the law of trade-marks 
and unfair trade has grown from a thin trickle of judicial de- 
cision to a wide stream of statutes and precedents. We have 
kept track of the formation of this large body of law, and have 
assisted, in some measure, in shaping it. 

Sixty-five years ago there were probably not more than 
a thousand trade-marks in existence in the 
United States. To-day, the registered 
trade-marks alone number above forty 
thousand. 

Knowledge is only accumulated by ex- 
perience, and we believe that we are 
justified by the facts in saying that we have 
had a larger and longer experience in 
Patent Office work than any other firm of 
patent solicitors. 

We are entitled to practice before the 
Patent Office in cases concerning trade- 
marks as well as those relating to patents. 
Our work in this connection includes pre- 
liminary searches of the Patent Office 
files; registration of marks; and the 
conducting of opposition, interference 
and cancellation proceedings. 

Our fees for trade-mark service are : 

For registration of a trade-mark (if there is no opposition), 
$15.00. To this fee should be added the government fee of 
$10.00 for registration, making the total cost of registering a 
trade-mark, $25.00. 

If the mark includes a special design, an additional fee of 

$5.00, to cover the expense of preparing the drawing, is charged. 

For preparation of a design, or devising a trade-mark, where 

the idea is our own, we charge a fee based on the time and labor 

involved. 

For search of the Patent Office files our charge is $5.00. This 
search should always be made before an application for registra- 
tion is filed. 

After an application has been filed for registration, an exam- 
ination is made by the Patent Office, for the purpose of ascertain- 
ing whether or not the application is anticipated. If the Trade- 



THE CORTICELLI 
SILK TRADE-MARK. THE 
cat's HEAD IS PRINTED 
ON A LABEL PASTED ON 
THE END OF EVERY 
SPOOL. 



73 



74 



Trade-Marks. 



AMERICAN HOMES 

AND GARDENS 

THE TITLES OF PERIOD- 
ICALS SHOULD BE PRO- 
TECTED BY TRADE-MARK 
REGISTRATION. 



Mark Examiner in the Patent Office refuses to register a trade- 
mark, an appeal may be taken to the Commissioner of Patents, 
[f he reaffirms the Examiner's decision, another appeal may be 
taken to the Court of Appeals of the District of Columbia. 

For conducting appeals our fee is based on the circumstances 
of the case. 

It may happen that you have applied for registration of a 
trade-mark essentially similar to that of 

another registrant or applicant. In such SOENTTFICAMERICAN 
a case the Commissioner of Patents is 
authorized to institute what are called 
"Interference Proceedings," for the pur- 
pose of ascertaining who is the rightful 
owner. If you are dissatisfied with the 
decision of the Examiner of Interferences, 
by whom the inquiry is conducted, you 
may appeal to the Commissioner in person; and from his 
decision you may appeal further to the Court of Appeals of the 
District of Columbia. 

A registered trade-mark can be assigned only in connection 

with the good-will of a business in which the mark 
Trade^Marks ^^ used. The assignment must be recorded in the 

United States Patent Office within three months of 
its date, otherwise it is void as against any subsequent innocent 
purchaser for a valuable consideration. The Commissioner 
of Patents is required to keep a record of such assignments. 
The usual fee for preparing and recording an assignment is 
$5.00. 

Delays in registering trade-marks are often caused by the 

failure of trade-mark owners to supply us readily 

with all the information necessary to formulate an 

application for registration in proper form. 

If you are contemplating the registration of a 

mark, note carefully the following data which must 

be supplied. 



Information 
Needed Be- 
fore an Ap- 
plication for 
Registration 
Can Be Pre- 
pared. 



1. Name of the owner of the trade-mark. 

2. If the owner is a corporation, the State in which it has been 
incorporated; if a firm, the names of the members thereof. 

3. Residence of the owner. 

4. Place of business of the owner. 

5. Nationality of the owner. 

6. Whether the mark is used in interstate or foreign commerce, 
or commerce with the Indian tribes. 

7. Class of merchandise on which the mark is to be used, and 
the particular description of the goods comprised in that class. 
Thus, the applicant must not state merely that a mark is to 
be used with "Shirts," but should be more specific, and state 
whether the shirts are outer or under garments, and of what 
material they are made. 

8 A statement of the manner in which the trade-mark is applied 
to the goods. If by means of labels, six copies of the label 
should be furnished; if otherwise, six specimens of the mark 
as usually affixed. 

9. As nearly as possible the earhest date on which the mark was 
used. 



Trade-Names7 75 



10. Whether or not the mark is registered in any foreign country; 
and, if so, the date of registration or of the application for 
registration. 

11. If the applicant be not a resident of the United States, the 
name and address of some person residing in the United 
States upon whom process may be served or notice of pro- 
ceedings affecting ownership. (If desired, we can appear on 
the Patent Oflfice records as the representative of a foreign 
registrant upon whom papers may be served.) 

Man}' American manufacturers and exporters do not realize 
the importance of registering their trade-marks in 
^^Foret*ii*° --^^ foreign countries to which their goods are sent. 
Countries Knowing only the trade-mark laws of the United 
States, where the title is derived from first use and 
is confirmed b}^ registration, they often wait until it is too late 
before attempting to comply with the registration laws in other 
countries. 

A fundamental difference between the trade-mark laws of 
the United States and those of Germany, Austria, Hungar^s 
Argentine Republic, Bolivia, Brazil, Chili, China, Paraguay, 
Peru, Venezuela, Uruguay, Costa Rica, Guatemala, Denmark, 
Finland, Norway, Sweden, Spain, Japan and Cuba, is that in the 
foreign countries named the first to register a trade-mark acquires 
the property. therein, to the exclusion of the rightful owner. 

In many other countries the registration is, after a short 
period, also conclusive proof of ownership. American exporters 
will therefore see the importance of registering their marks in the 
foreign countries to which they send their goods. 

We are prepared to register American marks in any country 
that has made provision for the registration of foreign-owned 
marks. Upon application, we will send a list of fees for regis- 
tration in each country. 

Our organization is complete in every particular. We have 
a highly trained staff of trade-mark specialists which 
Facilities ^^^ place at the service of our clients. Our branch 
office in Washington, located just across the street 
from the Patent Office, give^ us unsurpassed facilities for rapid 
and accurate work. We ara always in close touch with new 
trade-mark developments through being on the ground, and 
being engaged in daily practice before the Patent Office. 

L'nder the present law those applications for the registra- 
tion of trade-marks which have been passed and 
Opposition allowed are published in the Official Gazette, an 1, 
froceedmgs ^.-^^Ynxi thirty days after the date of publication, 
any person who believes he would be damaged by 
the registration of a mark may oppose its registration bv film': 
notice of opposition thereto. The opposer need not be the 
owner of a registered trade-mark, but, if registration is sought 
by another for a trade-mark so closely resembling one in use by 
the opposer on goods of the same descriptive properties as to be 
liable to cause confusion or mistake in the minds of the public 
or to deceive purchasers, the registration of such mark to the 
applicant would justify the opposer' s belief that he would be 
damaged thereby. 



76 Trade-Marks. 



Notices of opposition to be effective must be filed within 
thirty days after the date of publication of the mark sought to 
be registered in the Official Gazette. 

Munn & Co. practice exclusively before the Patent Office, 
and therefore all litigation arising in the office of 
Legal Causes Munn & Co., such as suits for infringement of pat- 
ents, trade-marks and copyrights, unfair business 
competition, the preparation of assignments, licenses and con- 
tracts, the formation of corporations, as well as validity and 
infringement opinions, are conducted by the law firm of Munn 
& Munn, Woolworth Building, 233 Broadway, New York. 



MUNN & COMPANY 

Solicitors of Patents 

Woolworth Building 625 F Street 

233 Broadway Washington, D. C. 

New York 



Patents 



We take this opportunity to call attention to 
the fact that our comprehensive practice in- 
cludes not only the securing of the registration 
of trade-marks, but embraces as well the ob- 
taining of Letters Patent in the United States, 
and all countries foreign thereto. 

Numbered among our clients are some of 
the most successful inventors in the United 
States. Our endeavors are always directed 
to the securing of Letters Patent which will 
protect the inventions of our clients as broadly 
and adequately as possible. A copy of our 
Hand Book on Patents, in which this phase of 
our practice is fully discussed, will be mailed to 
any address, on application. We shall be 
pleased to give our unbiased, free opinion as to 
the probable patentability of any invention, 
provided a sketch and a description disclosing 
the same are sent to us. A distinct advantage 
possessed by our clients is found in the free 
notice which each patent taken out through 
our office receives in the "Scientific American/* 

MUNN & CO. 

Solicitors of Patents and Trade-Marks 

233 BROADWAY, NEW YORK 
and 625 F St., Washington, D. C. 



